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Federal Court of Australia |
Last Updated: 29 September 2001
Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Limited [2001] FCA 1359
PATENTS - claimed invention relating to electrical connector - principles of construction applicable to the claims - "tongues ... formed on opposite walls of passageway in a plane approximately perpendicular to the axis of the passageway" - "means for affording deflection of tongues".
PATENTS - alleged infringement of claims in patent by respondent's electrical connector - whether respondent's connector possessed all essential integers of the claim - significance of copying of aspects of patentee's product.
PATENTS - invalidity - want of inventive step - uninventive skilled worker - whether such a worker can be a team - nature and extent of common general knowledge - whether idea of combining wire retention and strain relief was obvious - whether combination of integers for electrical connector was obvious.
Patents Act 1952 (Cth), ss 40, 100(1).
Patents Act 1990 (Cth), ss 7, 13(1), 18(1), 40, 138(3), 230, 233, 234.
NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239, followed.
Aktiebolaget Hassle v Alphapharm Pty Ltd [2000] AIPC 91-636, followed.
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262, cited.
Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331, followed.
Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385, cited.
Populin v HB Nominees Pty Ltd (1982) 41 ALR 471, cited.
Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91; (1961) 106 CLR 588, cited.
Catnic Components Ltd v Hill & Smith Ltd (1981) 7 FSR 60, cited.
Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 177 ALR 460, cited.
Interlego AG v Toltoys Pty Ltd [1973] HCA 1; (1973) 130 CLR 461, cited.
Fellows v Thomas William Leech Ltd (1917) 34 RPC 45, cited.
Walker v Alemite Corporation [1933] HCA 39; (1933) 49 CLR 643, cited.
Electrical and Musical Industries Ltd v Lissen (1939) 56 RPC 23, cited.
Dudgeon v Thomson (1877) 3 App Cas 34, cited.
Rehm Pty Ltd v Webster Security Systems (International) Pty Ltd (1988) 81 ALR 79, cited.
Rodi and Wienenberger AG v Henry Showell Limited [1969] RPC 367, cited.
Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079, cited.
Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd [1970] HCA 38; (1970) 180 CLR 160, cited.
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513, cited.
Sunbeam Corporation v Morphy-Richards (Australia) Pty Ltd (1961) 35 ALJR 212, at 218, cited.
Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225, cited.
Allsop Inc v Bintang Ltd (1989) 15 IPR 686, cited.
Cooper Animal Health Australia Ltd v Western Stock Distributors Ltd (1986) 6 IPR 545, cited.
The General Tire and Rubber Company v The Firestone Tyre and Rubber Company Ltd [1972] RPC 457, cited.
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491, cited.
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253, cited.
Graham Hart (1971) Pty Ltd v S W Hart & Co Pty Ltd [1977] HCA 5; (1977) 141 CLR 305, cited.
Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR 171, cited.
Acme Bedstead Co Ltd v Newlands Brothers Ltd [1937] HCA 63; (1937) 58 CLR 689, cited.
Adelmann and Ham Boiler Corporation v Llanrwst Foundry Co (1928) 45 RPC 413, cited.
Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228, cited.
Winner v Ammar Holdings Pty Ltd (1993) 41 FCR 205, cited.
National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252, cited.
Vickers, Sons & Co Ltd v Siddell (1890) 15 App Cas 496, cited.
RD Werner & Co v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679, cited.
Blakey & Co v Latham & Co (1889) 6 RPC 184, cited.
Beecham Group Limited's (Amoxycillin) Application [1980] RPC 261, cited.
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173, cited.
Morgan & Co v Windover & Co (1890) 7 RPC 131, cited.
Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels plc (1993) 26 IPR 565, cited.
MINNESOTA MINING & MANUFACTURING COMPANY v TYCO ELECTRONICS PTY LIMITED
N 723 of 1999
SACKVILLE J
SYDNEY
26 SEPTEMBER 2001
IN THE FEDERAL COURT OF AUSTRALIA |
|
NEW SOUTH WALES DISTRICT REGISTRY |
1. The respondent/cross-claimant bring in short minutes of order within fourteen days to give effect to these reasons for Judgment.
2. The respondent/cross-claimant file and serve written submissions as to costs within fourteen days.
3. The applicant/cross-respondent file and serve its written submissions as to the form of orders and costs within fourteen days of the filing and service of the respondent/cross-claimant's short minutes of order and submissions.
4. The matter be re-listed on a date to be notified to the parties.
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 |
JUDGE: |
SACKVILLE J |
DATE: |
26 SEPTEMBER 2001 |
PLACE: |
SYDNEY |
THE PROCEEDINGS
1 The applicant ("3M"), a corporation incorporated in Minnesota in the United States of America, is the registered proprietor of Australian Letters Patent No 624486 (the "Patent") for an invention entitled "A Connector for Cables". 3M is part of a group of companies ("3M Corporate") operating throughout many areas of the world. The Patent is related to a connector for insulated conductors such as cables, particularly electrical communication cables. It was applied for on 14 March 1990, laid open to public inspection on 18 October 1990 and granted on 11 June 1992. The priority date of the Patent is 14 April 1989, by reason of a patent application filed in Germany on that date.
2 The respondent ("Tyco") is a distributor in Australia of a product known as the AMP Stack Mark IV 10-Pair Connector Module (the "Tyco connector"). 3M claims that Tyco has infringed its Patent, in particular claims 1, 4, 6, 8 and 9. Tyco admits doing and threatening to do acts which would constitute infringement of 3M's exclusive right to exploit the invention if the Tyco connector is held to infringe any of the claims of the Patent. In particular, Tyco has sold or disposed of, or offered to sell or dispose of, the Tyco connector by successfully tendering to supply connector modules to Telstra Corporation Ltd ("Telstra").
3 Tyco says, however, that the Tyco connector lacks several of the essential integers of claim 1 of the Patent. Since it is common ground that claims 4, 6 and 8 are dependent on claim 1, Tyco says that none of claims 4, 6 or 8 has been infringed, regardless of whether the Tyco connector has the additional integers introduced by those claims. Claim 9 is an omnibus claim and Tyco contends that the Tyco connector lacks a number of the distinctive features of the claim 9 connector.
4 Tyco, by its amended cross-claim, seeks orders for revocation of the Patent. Its amended particulars of invalidity contend that the claimed invention is not a patentable invention and is liable to be revoked, on the following grounds:
(i) The invention as claimed in each of claims 1, 4, 6, 8 and 9 was obvious in the light of the common general knowledge as it existed at the priority date.
(ii) Claims 1, 6 and 8 were not novel, compared with the prior art base.
(iii) The claims in the Patent did not define the invention. Further, they were not fairly based on the matter described in the specification, in that they are too broad and travel beyond the alleged advance over the prior art.
Mr Yates SC, who appeared with Ms Bowne for Tyco, made it clear that the lack of novelty claim only arises if I reject Tyco's arguments on the construction of the key integers of claim 1 of the Patent, in particular integer 6. The obviousness issue must be addressed regardless of the outcome of 3M's contention that Tyco infringed the Patent.
THE LEGISLATION
5 3M lodged the application for the Patent under the Patents Act 1952 (Cth) (the "1952 Act"). The application had not, however, been finally dealt with when the 1952 Act was repealed by s 230 of the Patents Act 1990 (Cth) (the "1990 Act"), which came into force on 30 April 1991. In these circumstances, the 1990 Act applied to the application as if it were a complete application under that Act: 1990 Act s 234(2). Section 234(5) of the 1990 Act provides as follows:
"(5) Objection cannot be taken to:(a) an application mentioned in subsection (2); or
(b) a patent granted on such an application;
and such a patent is not invalid, so far as the invention is claimed in any claim, on any ground that would not have been available against the application or patent, as the case may be, under the 1952 Act."
6 The effect of s 233(4) of the 1990 Act, which is in similar terms to s 234(5), was explained by Lockhart J, with whom Northrop and Burchett JJ agreed, in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239, at 253-254:
"[T]he evident intent of s 233(4) is to ensure that the grounds of revocation under the 1990 Act (which, though in some cases are expressed in different terms, are essentially the same as the grounds previously available under s 100 of the 1952 Act) apply as the grounds for revocation of a 1952 Act patent; but with this important qualification, namely, that the elements of each ground of revocation under the 1990 Act apply only to the extent that they replicate in substance the elements that previously constituted a ground of revocation under the 1952 Act. Hence, if a ground of revocation under the 1990 Act omits an element which was a necessary part of a ground under the 1952 Act, the patentee has the benefit of it. On the other hand, if a ground under the 1990 Act contains an element not previously present under the 1952 Act, it cannot apply in aid of revocation of the 1952 Act patent. In short, a 1952 Act patentee is not to be worse off than he would have been if the 1952 Act had continued to operate, but he may be better off if the 1990 Act treats a former element of a ground of revocation as being no longer necessary."
See also Aktiebolaget Hassle v Alphapharm Pty Ltd [2000] AIPC 91-636, at 38,164.
7 Section 13(1) of the 1990 Act provides that a patent gives the patentee exclusive rights, during the term of the patent, to exploit the invention. "Exploit", in relation to an invention which is a product, includes making, hiring, selling or otherwise disposing of the product, and using or importing it: see Schedule 1 (definition of "exploit").
8 Section 138(1) of the 1990 Act permits a person to apply to a prescribed court, including the Federal Court, for an order revoking a patent. Section 138(3) of the 1990 Act provides that the Court may revoke the patent, either wholly or so far as it relates to a claim, on one or more of a number of grounds including the following:
"(b) that the invention is not a patentable invention;...
(f) that the specification does not comply with subsection 40(2) or (3)."
9 Section 18(1)(b) of the 1990 Act provides as follows:
"(1)... a patentable invention is an invention that, so far as claimed in any claim:(a) ...; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step...".
10 Section 40(2) requires the complete specification to:
"(a) describe the invention fully, including the best method known to the applicant of performing the invention; and(b) where it relates to an application for a standard patent - end with a claim or claims defining the invention....
Section 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification. It was not suggested that there was any relevant difference between the terms of s 40(2) and (3) of the 1990 Act and the equivalent provisions in the 1952 Act, namely s 40(1) and (2).
11 So far as novelty is concerned, the parties accepted that s 7(1) of the 1990 Act, which specifies when an invention is novel, in effect codifies the law under the 1952 Act and therefore continues to apply, subject to one qualification. The qualification is that the prior art is to be determined in accordance with the principles applicable under the 1952 Act, since these are more favourable to a patentee than the definition of "prior art base" in Schedule 1 of the 1990 Act.
12 The parties agreed that the position governing want of an inventive step was formally governed by ss 18(1)(b)(ii) and s 7(2) of the 1990 Act. Since, however, s 7(2) of the 1990 Act, read with s 7(3), expands the prior art information that can be taken into account in determining whether an invention involves an inventive step, the practical position is that the question of obviousness is to be determined under the principles applicable to s 100(1)(e) of the 1952 Act. That provision is as follows:
"100(1) A standard patent may be revoked, either wholly or in so far as it relates to any claim of the complete specification..., on one or more of the following grounds, but on no other ground:...
(e) that the invention so far as claimed in any claim of the complete specification...was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim...".
THE PRINCIPAL WITNESSES
13 The principal witnesses for 3M were the following:
* Mr Udo Seidel, a co-inventor named in the Patent. Mr Seidel at the time of the hearing was a Technical Manager in the Telecom System laboratory of 3M Laboratories (Europe) ("3M Laboratories"), a subsidiary of Minnesota Mining and Manufacturing Inc ("3M (US)"). Both 3M Laboratories and 3M (US) are part of 3M Corporate. In the late 1980s, Mr Seidel was a Senior Engineer employed by 3M Laboratories in Germany as a Project Leader. His background was in engineering design and his responsibilities at the time the claimed invention was developed included modifying telecommunications products to meet European requirements.
* Dr Hugh Stark, a Senior Lecturer in Mechanical Engineering and a consultant to private industry. Dr Stark specialised in the mechanical design of products, including plastic products, with particular reference to the strength and stiffness of such products. His experience included the design of plastic electrical fittings.
* Mr Ian Douglas, an engineer who, until his retirement in 1998, had for many years been employed by Telstra and its predecessors, Telecom Australia ("Telecom") and the Post-Master General's Department. As Mr Douglas acknowledged in cross-examination, his experience during the period 1986 to 1991 was limited to the External Plant Subdivision of Telecom. (The nature of the external plant is referred to later (see [29] below)). Mr Douglas' principal responsibility at the relevant times was to supervise the technical aspects of the contracts entered into by Telecom for the purchase of equipment for the "jointing" of large-size telecommunications cables.
14 The principal witnesses for Tyco were the following:
* Mr John Weir, a Lecturer in Mechanical Engineering. Mr Weir had academic qualifications in mechanical and electrical engineering and was nearing completion of the requirements for a Doctorate of Philosophy. He had experience as a designer of products which feature electrical connectors and cabling systems. Although 3M's written submissions described Mr Weir as an "academic mechanical engineer" he had undertaken significant consulting work as a design engineer. Mr Weir acknowledged that, although he had some hands-on experience of wiring systems, electrical connectors and telecommunications cabling, the primary focus of his professional experience had been elsewhere. However, he claimed to have (and, in my opinion, did have) a thorough understanding of the physical principles involved in beam theory, stresses, bending, displacement, wire retention and strain relief.
* Professor Andrew Samuel, an Associate Professor of Mechanical Engineering. Professor Samuel had extremely impressive engineering qualifications and extensive experience as a consultant professional engineer, specialising in engineering design, technology, manufacture and robotics. Professor Samuel was the author of five provisional patent applications. He accepted that his knowledge and experience of electrical connectors had been gained by reason of his work in robotics. One of the "criticisms" levelled at Professor Samuel's evidence by 3M was that he was over-qualified and therefore could not be regarded as a non-inventive skilled worker in electrical connectors.
* Mr William Hunter, a professional engineer with over fifteen years experience mostly as a mechanical engineer in the field of design of injection moulded plastic products. Mr Hunter had some experience in connection with the design of electrical connectors, although his experience was relatively limited. He had extensive experience, however, in the design of plastic products, including those involving flexible retaining elements.
* Mr George Georgevits, a practising electronics and communications engineer with a degree in Electrical Engineering (Communications). Mr Georgevits had a thorough working knowledge of a wide range of connectors in the course of 26 years hands-on experience. A key aspect of his work included testing the electrical performance of connectors. This involved terminating, dismantling and reterminating connectors both old and new. Mr Georgevits, as a hobby, collected electrical connectors and communication equipment, comprising tens of thousands of items.
* Mr Lionel Lyneham, a retired technician who worked for thirty-seven years for Telstra and its predecessors. Although Mr Lyneham had no professional qualifications in either industrial design or engineering, he had extensive practical experience in maintaining telecommunications plant and equipment, including electrical connectors, principally in relation to the "internal" plant. There was a limited challenge to Mr Lyneham's evidence, but in my view the challenge did not succeed.
15 3M criticised the evidence of Mr Weir and Mr Georgevits as partisan, because they were too ready to tailor their evidence to suit Tyco's case. In the case of Mr Georgevits I do not accept this criticism. To the minor extent that Mr Georgevits qualified his affidavit evidence, he did so in an open and fair fashion. In my opinion, his evidence was not tainted by partisanship.
16 Mr Weir's evidence was slightly more difficult to assess. There were some inconsistencies in his approach to different issues, although I do not regard them as major. Mr Weir also became a little defensive at one or two points in his cross-examination, although he readily enough acknowledged the inconsistencies when they were pointed out. I did not form the view, however, that Mr Weir's evidence was affected by partisanship. Moreover, he carried out careful and detailed comparisons of the fluted embodiment of the Patent and the Tyco connector, as well as carefully examining other products discussed in the evidence. In general I found Mr Weir's evidence reliable and helpful.
17 3M submitted that Mr Hunter's evidence should be discounted to a significant extent because his experience with connectors was limited. In my opinion, this submission was heavily influenced by the contention, in essence ultimately abandoned by Mr Catterns QC, who appeared with Ms Howard for 3M, that the non-inventive skilled addressee or worker in this case should be regarded simply as a user of connectors, rather than as a team which included a person skilled in the design and development of plastics. I address the question of the skilled addressee later and explain that the notional addressee should be regarded as a team (see [172] below). As I later explain, a person of Mr Hunter's skill and experience should be regarded as a member of the team comprising the notional skilled addressee or worker regardless of the fact that his experience with connectors was relatively limited. I found Mr Hunter's evidence to be both useful and persuasive.
18 For his part, Mr Yates submitted that Mr Douglas' evidence was tainted by partisanship. I agree that Mr Douglas displayed some obstinacy in aspects of his evidence. I do not, however, attribute this to partisanship but to the fact that Mr Douglas' knowledge was relatively limited (by comparison with other witnesses). That, in turn, was a product of his rather narrow professional experience. Mr Douglas had not practised as a mechanical engineer and had not designed connectors. As already noted, Mr Douglas' work was confined to the external plant of Telstra and its predecessors (see [13] above). The evidence revealed the limitations of his knowledge in a number of important respects. For example, he was unaware of the use of particular modular connectors in Australia prior to 1989, notwithstanding that they had been quite widely used, including uses within the internal plant of Telecom. It is fair to say, as Tyco submitted, that Mr Douglas possessed some of the knowledge of the hypothetical skilled addressee or worker, but lacked the expertise and experience that would be at the disposal of a team of persons skilled in the relevant art.
19 No criticism was made of Dr Stark's objectivity. His evidence was mainly concerned with the question of infringement. As is explained later, I did not find all Dr Stark's opinions on this question to be convincing. I should note that Dr Stark gave only limited evidence directly relevant to the question of obviousness, his affidavit evidence on this issue being largely confined to some observations in reply to Mr Hunter's affidavit on invalidity.
BACKGROUND TO THE INVENTION
20 An electrical connector is defined in a technical dictionary to mean
"a coupling device employed to connect conductors of one circuit or transmission element with those of another circuit or transmission element."
(IEEE, Standard Dictionary of Electrical and Electrician Terms (2nd ed 1978)). In simpler terms, it is a device which contains a metal element designed to connect two wires together so as to enable an electric current to pass from one wire to another. Electrical connectors are used in industries where it is necessary to join two wires. Many devices which are or include electrical connectors have distinctive names such as terminals, plugs, sockets, jacks and printed circuit boards.
21 The quality of the connection is affected by a number of factors, including corrosion, aging and the manner in which the connection is made (for example, twisting of wires together is generally less effective than soldering). Once the connection is made, the wires must remain in place in order to maintain the connection. It is therefore necessary to incorporate into the electrical connector a means for retaining the wires in place and to prevent withdrawal from the passageway in which the wire is located, for example in a radial direction. This feature is known as wire retention. After the insertion of the wire into the connector, the function of the retainer is to secure the wire so that the electrical connection is maintained and, if the connector is a multiwire connector with a cover, to secure the other wires in place when the cover is removed and the connector is the subject of maintenance. A means of wire retention is also needed to retain a wire in the connector during the assembly process.
22 The connector may also be affected by physical stress on the connection point (that is, the contact element). The greater the physical stress at the connection point, the greater the loss in consistency of the electrical connection. In the telecommunications industry, "strain relief" generally refers to a feature designed to minimise force transmitted to the connection point. More specifically, it refers to a feature incorporated in a connector which is designed to minimise the effect of tensile forces applied to the conductor in a longitudinal direction away from the connection point. Such a force occurs when a wire or conductor is strained or pulled axially or laterally. The strain relief feature is designed to move the point of tension created by that force away from the contact element to the point where the feature is located. The means of affording wire retention does not necessarily afford strain relief. Indeed, 3M says that one inventive feature of its invention is that it provides a means both for wire retention (by a slot of a particular shape into which the wire is inserted) and strain relief (by means of tongues which grip the conductor and deflect towards the connection or contact point).
23 According to Mr Weir, a number of forms of strain relief can be incorporated into a connector. These include the following approaches:
* The wire is enclosed in an immobilising long passageway extending axially back from the contact element. The length of the passageway should ensure that any flexure of the wire outside the corridor occurs at a remote distance from the contact point. The longer the passageway the greater the strain relief.
* The wire is threaded along a tortuous path towards the contact element. Such a path ensures that the wire experiences strong frictional contact with the walls or posts of the enclosing passageway. This frictional contact resists any axial tension applied externally to the wire and prevents such tension from being transmitted along the wire to the contact element. The more tortuous the path the greater the strain relief.
* The wire is gripped, squeezed or pressed by contact forces acting perpendicular to its axis and at a location along the wire some way removed from the point of electrical contact. The gripping force is usually imparted by a surface or surfaces acting on the wire insulator and leads to strong frictional contact between the insulator and the gripping surface. This frictional contact resists any axial tension applied externally to the wire, and prevents such tension from being transmitted along the wire conductor to the electrical contact element. The stronger the gripping force, the greater the strain relief.
* An axially compressed insulation tip is used, whereby the wire insulation is compressed axially by contact forces acting along the wire close to the point of electrical contact. The axial force is usually imparted by frictional contact from surfaces acting on the wire insulator, when those surfaces are displaced axially towards the electrical contact element. The axial compression so imparted will oppose any axial tension applied externally to the wire, and therefore reduce the extent to which the electrical contact element will experience tensile forces. The stronger the axial compressive force, the greater the strain relief.
Mr Weir's view, which I accept, was that the connector claimed in the Patent displays both gripped wire and axially compressed insulation tip strain relief. The connector does not utilise long passages or tortuous path strain relief.
24 In the course of the hearing, the claimed invention was quite often referred to as having a "self-locking action". Mr Weir said that the concept of a self-locking action effected by means of an oblique member hinged at one end to a supporting body and placed into compression when it presses against a counteracting surface at the other end, is universally known and is exemplified by door stops, deck chairs and sailing cleats. He also said that it was not correct to suggest (as Mr Douglas had) that the claimed invention exclusively relies on a self-locking action. Rather, strain relief is achieved (aside from any gripping effect) by the axially compressed insulation tip, which overcomes the slight initial movement in the conductor that would be characteristic of a purely self-locking action. In re-examination he said that there is a self-locking action on the tongues as they start to do their job, but that the axially compressed insulation tip phenomenon reduces the extent to which harmful forces are transmitted to the joint with the electrical contact.
25 I do not think that anything of substance turns on the use by witnesses and indeed counsel of the expression "self-locking mechanism" in relation to the claimed invention. I accept Mr Weir's analysis, but I did not understand other witnesses (except perhaps Mr Douglas) to challenge his analysis. Rather, they adopted the expression "self-locking" as convenient shorthand to refer to the functioning of the claimed invention.
26 The design of connectors has to take into account the requirements of particular industries. In the electrical industry standard wires are typically used. Standard wires are not themselves insulated, but are twisted together. The bundles of twisted wires are twisted together and placed in an insulation sheet. Because the wires are flexible they are less sensitive to physical stress than solid wires. Wires used at the priority date in the electricity industry were generally relatively large. Wires were placed into a connective element and pressed into the wall of the housing, so that they were locked into position. Typically strain relief was achieved by routing the wires around an S-bend. Since a force travels only in a straight line, the S-bend minimised the tension that reached the contact element. Sometimes clamps were used for additional strain relief.
27 Wires used in the telecommunications industry are generally solid copper wires. Each single copper wire, or conductor, is insulated with material such as paper, pulp or plastic. Usually wires are placed in a configuration of bundles of 10 or 25 pairs of wires. The wire gauge (that is, the diameter of the solid copper wire without insulation) used in the telecommunications industry in Australia prior to 1989 ranged from 0.32 mm to 1.2 mm, although most commonly conductors were between 0.32 and 0.64 mm in diameter.
28 Cables in the telecommunications industry consist of multiple pairs of conductors. Generally speaking, as Mr Douglas explained, telecommunications cables are built up, commencing with 10-pair conductor groups which are then arranged in 50 or 100 pair bundles. The bundles may be combined to make even larger bundles. The physical mass of large size cables is such that they can only be handled in relatively short lengths. Paired conductors may therefore have many joints along their length.
29 A distinction is drawn in the telecommunications industry between internal and external plant. "Internal plant" refers to equipment within telephone exchange buildings that is concerned with telephone circuit switching. "External plant" commences from the point at which cables are attached to what is known as the Main Distribution Frame ("MDF") in the telephone exchange building and extends to the entire telecommunications network outside that building, including customers' premises. Conductors used in the external plant are generally subject to greater stress than those used in the internal plant.
30 Cables are divided into two types: main cables and distribution cables. The main cable goes from the exchange to the first distribution pillar in the street. From that point, the cables are part of the distribution network. From the MDF, large size main cables (each containing up to 3,500 pairs of wires) are carried in protective conduits along the streets to the distribution pillars. At the distribution pillars, the large size main cables are connected to smaller branching distribution cables. At each distribution pillar the cable size is progressively reduced to a size appropriate for that type of premise. At business premises, the cable entering the premises may contain 50 pairs or 100 pairs or more, depending on the size of the building.
31 Depending on the pair count, the length of cable between connections in the telecommunications industry can vary from about 100 to 2000 metres. If cables have to be restored, for example because of construction activity, they may have to be cut and reconnected. A telecommunications network therefore generates a need for many connectors. In 1989, the typical industry standard required a connection to last from 20 to 25 years. The quality of connection accordingly had to be maintained throughout this period.
32 The Patent involves the use of what is known as insulation displacement contact technology ("IDC technology"). Prior to the introduction of that technology in the late 1970s or perhaps somewhat earlier, the usual techniques for connecting individual or standard wires to a connector required the insulation to be stripped from the end of the wire (or conductor). The exposed conductor end was then crimped or soldered to the connector. Crimping required metal to be compressed around the conductor end to make the connection, while soldering required the wires to be twisted together and soldered, thereby enabling the current to pass between the two wires. Other techniques such as the use of "screw type" connectors and "twist and sleeve" connectors were also employed but these, too, required the insulation to be stripped from the conductor.
33 IDC technology is designed to provide a means whereby:
(i) individual wires, or strands of wire, can be inserted into a housing so as to make reliable contact with the contact element, thereby ensuring that a complete electrical circuit is created;
(ii) the insulation surrounding the wire, or strands of wire, can easily be penetrated or displaced without breaking the wire, thereby achieving good electrical contact between the contact element and the wire (that is, the electrical conductor); and
(iii) the wire is held firmly in place with some form of strain relief, thereby ensuring a reliable long term electrical connection even when tension or other force is applied to the conductor.
34 IDC technology involves the use of a metal contact element, with a U-formed slot (usually known as a "U-contact element"). The insulated wire is placed over the U-contact element and then pressed into it. The U-slot is narrower than the diameter of the copper conductor contained inside the insulated wire. When the insulated wire is pressed into the U-contact element, the protruding legs of the U-slot pierce the insulation surrounding the conductor. This splicing, as it is known, enables the electrical connection between the U-contact element and the conductor to be made. The U-contact element does not pierce the conductor itself.
35 In order for a reliable connection to be made, some force must be applied between the conductor and the U-contact element. This force is supplied in two ways:
(i) the deformation of the conductor; and
(ii) the deflection, within the limits of its elasticity, of the U-contact element.
When the conductor is pressed into the slot of the U-contact element, the conductor is forced to deform in order to "press fit" within the contact area. "Press fit" refers to the conductor and the contact element fitting together in a manner that prevents air gaining access to the contact area. If air does pass between the contact element and conductor corrosion may occur.
36 As the conductor deforms to press fit into the contact area, the U-contact element deflects sideways away from the conductor but within its elastic limits. (All materials have a capacity for deformation when force is applied. When the force is removed the material returns nearly to its previous form. This property is known as elasticity.) The elastic limits of the U-contact element depend on the nature of the material used to make the element. While the U-contact element is deformed, it applies a constant force towards the deforming element, namely the conductor.
37 Because of the interrelationship between the conductor and the contact element, and the need for the U-contact element always to deform within the limits of its elasticity, it is important in designing a connector to understand the physical properties of both the conductor and the metal contact element. If, for example, the element is too rigid it may cut the wire; if it is too soft it may deflect beyond its elastic limits and may not create a sufficient force on the conductor to maintain a reliable connection.
DEVELOPMENT OF THE INVENTION
38 3M adduced evidence without objection from Mr Seidel, one of the co-inventors named in the Patent, as to the development of the claimed invention. The view was apparently taken that the evidence was within the principle stated by Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262, at 287:
"I have concluded that evidence of research and experiments (if any) of a patentee leading up to his claimed invention is generally admissible [on the question of inventiveness] though not always likely to be helpful."
39 3M recognised that the opinion of Mr Seidel as the inventor was not admissible on the question of whether the invention was obvious: Wellcome, at 287. But 3M relied on the process leading to the claimed invention as supporting the conclusion that an inventive step was involved. Tyco also relied on the process to support its contention that the hypothetical skilled addressee, both for the purposes of construing the claims in the Patent and for assessing obviousness, should be regarded as a team comprising persons experienced in a variety of fields.
40 Mr Seidel's evidence of the events leading to the filing of the patent application in Germany, the priority date for the Patent, was unchallenged. The following account is based on that evidence.
41 In 1987, 3M Corporate mainly manufactured 20 and 25 pair module splicing connectors. A module splicing connector is one that can connect, with one action, multiple pairs of wires and that has a cover on each side of the connector body. In order to use modular connectors, the wires are placed into the channels of the connector, the cover is placed over the main body of the connector, and a tool is then used to press the cover onto the main body. When the components are pressed together, the electrical connections are made for all the wires simultaneously.
42 The range of 20 and 25 pair module connectors was known as the "MS² range". The 25 pair connector module achieved strain relief by a feature moulded into the cover so that the cover, when in place, clamped the wires. The 20 pair connector module did not employ that form of strain relief.
43 3M Corporate concentrated on 20 and 25 pair module connectors because the distribution systems in most countries used cables consisting of 20 or 25 pair bundles of wires. Several countries did, however, use cables consisting of 10 and 20 pair bundles of wires. 3M Corporate manufactured 10 pair module connectors for Deutsche Telekom, for example, simply by cutting 20 pair modules in half.
44 On 2 November 1987, Mr Seidel received a written request from the then technical manager of 3M Laboratories Telecomm Department to develop a 10 pair module splicing system. The request was made shortly after a group of senior managers attended the International Telecommunications Union ("ITU") trade show in October 1987. The request was prompted by a recognition that an increase in the use of computers and the volume of data transmission would create greater demands on telecommunications distribution networks. These developments were thought likely to generate greater use of larger wire gauges in order to facilitate faster transmission of data and a need for smaller wire counts. There was also likely to be an increased incidence of wire handling in distribution networks and a need to upgrade connections, as well as the maintenance requirements of existing but aging networks.
45 At the time he received the request, Mr Seidel was a Senior Engineer involved in the development of network accessories, that is products necessary to protect electrical connections, specifically copper cables. Mr Seidel led a team which included a development engineer responsible for the contact element development and a mechanical engineer responsible for testing. Mr Seidel himself was responsible for the overall design of the connector module. Other than the request for a module to cover larger wire gauges and a smaller wire count, the development of the new module was left entirely to the project team.
46 The multiple modular splicing systems available in 1987 were designed for a wire gauge of between 0.32 and 0.65 mm. In order to accommodate greater wire gauges of up to 0.9 mm it was necessary to take into account the fact that larger wires tend to be more rigid. Mr Seidel recognised that the increased rigidity of the larger wires potentially increased the tension on electrical connectors during handling. The greater frequency of wire handling also increased the risk that wires would fall out of connectors during handling. It was therefore apparent to him that there was a need for additional methods of wire retention and strain relief than had previously been incorporated in connectors.
47 In January 1988, the team developed target specifications. Mr Seidel in his evidence described the goal as being to design a 10-pair modular connector that could be used with existing 3M tools. The project team took as its starting point the MS² connector modules. They did so mainly because the MS² connector modules were known to the market and customers would be able to use existing application tooling (comprising a splicing head and a hydraulic crimping unit). Since the idea was to use the existing application tooling the height and length of the connector module was predetermined. There was some flexibility as to width, but it was decided to make the width as close as possible to the existing 25-pair modular connector. This was to ensure that the new product could fit within existing enclosures (that is, devices used to house connectors and protect them when placed in a manhole or buried in the ground).
48 The first task undertaken by the project team was to design a contact element small but effective enough to be used in a modular connector of the size contemplated. The contact element also had to be able to cope with more varied wire gauges than the MS² range. This task was duly completed.
49 The project team then discussed various means of wire retention and strain relief known to them. According to Mr Seidel, the conventional means could not be employed within the size constraints under which the team was operating. At a "brainstorming meeting" on 5 April 1988, which lasted for five or six hours, many methods of strain relief and wire retention were discussed. Mr Seidel formed the view that the solution might be what he described as "a single multi-functional design feature". By this he meant a single feature which provided effective strain relief and wire retention across a range of wire gauges and which was sufficiently small so as to fit within the proposed dimensions of the modular connector.
50 The meeting concluded that the solution lay in the use of "flexible arms". The use of rigid arms was rejected because they would cut into the insulation surrounding the wire and would strip the insulation if the wire were pulled. To prevent wires being dislodged from the module, the team decided to adopt a tapered slot which was narrow at the top and wide at the bottom to keep the wire inside the wire channel. It was also decided that the flexible arms had to be designed so that they would move, on insertion of the wire, in a direction opposite to the direction in which the wire might be pulled. This required the arms to move towards the U-contact element during the insertion of the wire.
51 After the meeting, Mr Seidel spent the bulk of his time over the next two weeks developing the details of the proposed solution including the shape of the flexible arms. He prepared drawings using a computerised design tool. He explored a variety of shapes for the slot between the flexible arms. Details of his solution were recorded in a laboratory notebook entry. The three members of the team signed the entry to show that they "had thought about and had agreed with" the entry.
THE PATENT
52 The specification identifies the invention as one related to insulated conductors such as cables, particularly for electrical communication cables.
DESCRIPTION OF THE PRIOR ART
53 The description of the prior art commences with this statement:
"Connectors of the kind mentioned typically include insulation-penetrating cutting terminals within at least one passageway. Further, suitable retaining means are provided retaining the cable in position and restrict removal of the cable from the passageway if the normally attached cover is removed. In case the cable is urged out of the passageway, the danger is encountered that electrical contact will be interrupted. Particularly for telecommunication cables it is undesired that the transfer of data is interrupted if work is undertaken at the connectors."
54 Reference is then made to five examples of the prior art. The first is to German Patent 36 22 164 (the "Seidel Patent"). This is said to disclose a retaining means for connection wires in a connector wherein the side walls of an entrance slot include flexible barbs such that cables of different diameters can be introduced and secured against outward movement. The specification acknowledges that the problem of retention is satisfactorily resolved by the Seidel Patent, but continues as follows:
"However, the known retaining means do not enable a strain relief which normally is additionally required. Strain relief means that a tension force at the cable is not immediately transmitted to the contact area, rather, a structural feature is necessary to maintain the electrical contact by forming a sufficient resistance against the cable being pulled out of the connector."
55 The specification next refers to United States Patent 4 262 985 (the "Muelhausen Patent") which Mr Catterns described in opening as Tyco's "best documentary piece of prior art" (T7). (The Muelhausen Patent was relied on by Tyco to support its want of novelty claim. Tyco did not suggest, however, that the Muelhausen Patent was part of the common general knowledge for the purpose of obviousness as a ground of invalidity. However, Tyco did submit that a commercial embodiment of the Muelhausen Patent, the AT&T 110 connector, did constitute an example of the prior art.) According to the specification, the Muelhausen Patent discloses a connector for connecting wires "wherein retaining means and means for a strain relief are integrally formed with a housing of plastic material". The specification makes these observations about the Muelhausen Patent:
"The retaining means is defined by a slot with an entrance portion thereof having a smaller width than below the entrance portion so that movement of the cable out of the slot is restricted. The strain relief means are defined by tongues extending at an angle with respect to the longitudinal axis of the cable, the tongues being resiliently deformed if the cable is inserted. It is a disadvantage with the known connector that the overall dimensions of the connector are relatively large due to separate means for the retaining and the strain relief purposes, respectively. It is further disadvantageous that the strain relief effect decreases with increasing diameter of the wires."
56 The specification then makes brief mention of German Patents 24 56 977 (the "McKee Patent") and 26 37 378 (the "Mathe Patent") each of which is said to disclose separate retaining and strain relief means.
57 Finally, the specification refers to German Patent 24 46 670 (the Shoemaker Patent") which is said to disclose an electrical connector terminal integrally formed of sheet metal. It is said that the contact terminals embodied in this invention are not adapted for use in connection with telecommunication connectors structured as modules and that the invention has other disadvantages.
58 The description of the prior art in the specification concludes as follows:
"The present invention provides a connector for insulated conductors, particularly for electrical telecommunication wherein the retaining means for the conductor is simply combined with a strain relief."
SUMMARY OF THE INVENTION
59 The summary of the invention is as follows:
"The invention includes an integrally molded basic body of plastic material having one or a plurality of passageways adapted to receive insulated conductors. In the connector according to the invention, flexible tongues are formed at opposing walls. The tongues, extend in a plane approximately perpendicular to the longitudinal axis of the passageway. At the free ends of the tongues, a relatively narrow slot is formed, the most narrow portion of the slot being adjacent the open upper side of the passageway and it has a width smaller than the diameter of the smallest cable to be placed in the connector. The lower portion of the slot having a larger width so that by this, a movement of the cable out of the passageway is resisted. It is further essential to the invention that the tongues are shaped or are connected to the walls of the passageway such that the tongues are uni-directionally resiliently deformed toward one end of the passageway and toward the contacting element within the passageway. In other words, the ends of the tongues face toward the free end of the cable or opposite to the extraction direction so that an effective strain relief is achieved.With the known connectors it may occur that the cables move out of the passageway as soon as the cover on the passageway is opened. This danger increases with increasing diameter of the cable. With the connector according to the invention, however, the strain relief increases with increasing diameter, the flexibility of the tongues being adapted to retain cables within a large diameter range. Depending on the elasticity and the strength of the insulating material, the tongues mold into the insulating material more or less whereby the cable is effectively secured against displacement out of the connector. The deformation of the tongues and the embedding into the insulation are such that a cutting into the insulation and thus an elimination of the strain relief is avoided.
As already mentioned, it has to be assured that the tongues are deformed in a predetermined manner when the cable is pressed into the slot. In this connection, an embodiment of the invention provides that deflecting surfaces are formed on the tongues adjacent the slot which cause the tongues to be deformed resiliently by a cable such that the ends of the tongues face toward the cable end within the passageway. Different modifications for the deflecting surfaces can be used. According to an embodiment of the invention, the deflecting surfaces can be defined by chamfers formed at the side of the tongues oppositely located of the cable end. The chamfers form oblique surfaces which converge toward the cable end. They assure that both tongues are deflected toward the cable end.
According to a further embodiment of the invention, the width of the slot between the tongues continuously increases toward the bottom of the passageway. According to a further embodiment of the invention, the edges of the slot can include saw-tooth-like projections by which a movement of the cable out of the slot is effectively restricted.
If possible, the tongues should be deflected in total upon an insertion of the cable into the slot. An embodiment of the invention provides that the wall of the tongues facing away from the cable end merge into the wall of the passageway through a radius while the opposite wall of the tongues have a relieving flute adjacent to the wall of the passageway. By such a hinging of the tongues to the passageway walls, the tongues can be relatively simply and uni-directionally deflected toward the cable end as the cable is pressed into the slot.
The entrance portion of the slot is funnel-like enlarged in an upward direction in order to facilitate the insertion of the cable." (Emphasis added.)
THE CLAIMS
60 The Patent makes nine claims, as follows:
"1. A connector for an electrical cable, particularly for electrical telecommunication, comprising a housing of plastic material including a basic body, at least one transverse passageway having an axis being formed in said basic body, a contact element disposed in said passageway, and flexible retaining elements integrally formed with said basic body are positioned in said passageway, said retaining elements being resiliently deformed when a said cable is introduced into said passageway to retain said cable against outward movement, said retaining elements comprising tongues being formed on opposite walls of said passageway in a plane approximately perpendicular to said axis of said passageway, the free opposing ends of said tongues forming a narrow slot having the most narrow portion of said slot adjacent the open upper side of the passageway and having a larger width than the upper portion of said slot, and said tongues being joined to the walls of said passageway by means for affording deflection of said tongues such that said tongues are resiliently deformed toward one end of said passageway and toward the contact element within said passageway when a wire is inserted into said passageway.2. The connector according to claim 1, wherein said tongues have predetermined surface portions adjacent said slot adapted to aid in deforming the tongues when a said cable is inserted into said passageway.
3. The connector according to claim 2, wherein said surface portions are defined by chamfers which are formed at the sides of said tongues facing away from said contact element.
4. The connector according to claim 1, wherein said slot continuously enlarges toward the bottom of said passageway.
5. The connector according to claim 1 or 4, wherein said tongues merge into the passageway wall through a radius on the side facing away from said contact element while a relieving flute is formed into the tongue adjacent said passageway wall on the side of said tongues facing said contact element.
6. The connector according to claim 1 or 4, wherein said free opposing ends of said tongues include smoothly diverging terminal portions defining a wire accepting opening leading to said slot at its narrowest portion.
7. The connector according to claim 1 or 4, wherein saw-tooth-like projections are formed on the ends of the tongues defining the edges of said slot.
8. The connector according to claim 1, wherein the tongues are at least partially free to move relative to the bottom of said passageway.
9. A connector for electrical cables, substantially as described herein with reference to the accompanying drawings."
It will be seen that claims 2 to 8 are expressed to be dependent on claim 1.
61 The experts expressed different views as to the number of integers comprised in Claim 1 of the Patent. Nothing turns on this, as the experts expressed their opinions by reference to ten integers identified by Dr Stark, as follows:
INTEGER No. |
INTEGER |
1 |
A connector for an electrical cable, particularly for electrical telecommunication, comprising a housing of plastic material including a basic body, |
2 |
at least one transverse passageway having an axis being formed in said basic body, |
3 |
a contact element disposed in said passageway, |
4 |
and flexible retaining elements integrally formed with said basic body are positioned in said passageway, |
5 |
said retaining elements being resiliently deformed when a said cable is introduced into said passageway to retain said cable against outward movement, |
6 |
said retaining elements comprising tongues being formed on opposite walls of said passageway in a plane approximately perpendicular to said axis of said passageway, |
7 |
the free opposing ends of said tongues forming a narrow slot |
8 |
having the most narrow portion of said slot adjacent the open upper side of the passageway and having a width smaller than the diameter of the smallest cable to be placed in the connector |
9 |
the portion of said slot adjacent the bottom of said passageway having a larger width than the upper portion of said slot, |
10 |
And said tongues being joined to the walls of said passageway by means for affording deflection of said tongues such that said tongues are resiliently deformed toward one end of said passageway and toward the contact element within said passageway when a wire is inserted into said passageway. |
THE DRAWINGS
62 The specification includes a number of drawings, described as follows:
* Figure 1 is a perspective view of a corridor according to the invention.
* Figure 2 is a cross-sectional view of the tongues and passageway. (The specification refers to a cross-sectional view along line 2-2 of Figure 1, but there is no such line.) The shaded area in Figure 2 shows the tongues and the walls of what the specification describes as the passageway. Although Figure 2 falls with claim 1 it more particularly describes claim 3 which specifically refers to surface portions defined by chamfers.
* Figure 3 is similar to Figure 2, but includes a "pressed-in cable" as can be seen also in the right-hand section of Figure 1.
* Figure 4 is a front view of the illustration of Figure 2.
The detailed description of the drawings includes the following passages:
"Figure 1 shows a basic body 10 of a connector for electrical telecommunication cables. The basic body 10 is integrally molded of plastic material and shaped as a module. It includes two transverse passageways 11, 12 extending parallel at a distance from each other throughout the width of the basic body 10. It is understood that the basic body 10 could have a greater length for the receipt of a plurality of cables. Furthermore, it can be combined with a cover which closes the passageways 11, 12 from above. Further, a plurality of such basic bodies 10 could be stacked with each upper basic body defining a cover for the lower one. Connectors of the kind described are generally known.
Know[n] U-shaped contact elements 14 and 15 and knives 16 and 17 of metal are positioned in the passageways 11 and 12. An insulated conductor or cable 20 is introduced in the right passageway 12 from above with its front end being cut off by knife 17 while the contact element 15 cuts into the insulation cable 20 contacting the conductor of cable 20 in a manner known per se to establish an electrical contact.
Tongues 21, 22 and 23, 24, respectively, are formed at the walls of the passageways 11, 12 in front of the contact elements 14, 15. As can be particularly seen in Figures 1 and 2, passageways 11, 12, respectively, have recesses 25, 26 which are formed in the area of the tongues 21, 22 and 23, 24, respectively, whereby the joints of the tongues have a larger distance from each other so that they have a relatively large length. In the following, only tongues 21, 22 are described since the tongues 23, 24 are identically formed.
The tongues, 21, 22 merge into the passageway wall through a radius 27, 28 or radiused surface at the side facing away from the contact element 14. A flute 29, 30 is formed in the tongues 21, 22 adjacent the wall of the passageway on the side facing the contact element 14, whereby the thickness of the tongues 21, 22 is reduced. A slot 31 is formed between the free ends of tongues 21, 22 which continuously enlarges from the top to the bottom as can be seen in Figure 4. The most narrow width of the slot 31 is such that it is smaller than the diameter of the smallest cable to be inserted in passageway 11.
Oblique surfaces or chamfers 32, 33 are formed on the side of the tongues 21, 22 facing away from the contact element 14. The cham[f]ers 32, 33 are reduced in width toward the bottom of the passageway as can be seen in Figure 1. As can be particularly seen in Figure 4, the entrance portion of slot 31 is funnel-like, enlarged in its upward direction as shown at 34.
In Figure 3 a cable 40 can be seen including a conductor wire 41 and an insulation 42 which is pressed into passageway 11. The chamfers 32, 33 on the tongues 21, 22 cause the tongues to be deformed toward one end of the passageway 11 upon insertion of the cable 40 from above the passageway and the free end of the tongues 21, 22 being engaged by the insulation cause the insulation to be deformed and indentations are formed in the insulation by which a retraction of cable 40 in direction of arrow F is restricted. A force on the cable 20 in the direction of the arrow F causes the tongues to bite deeper into the cable insulation. The cable 20 within passageway 12 deforms the tongues 23, 24 in a corresponding manner. It can be seen in Figure 3 that the tongues 21, 22 are deflected in total by their hinging to the walls of the passageway toward the contact element. It is understood that by a corresponding shape of the tongues 21, 22 or by a corresponding hardness of the insulation 42, the tongues themselves could be deformed or bent in order to achieve a strain relief. It can be recognised moreover that the strain relief increases with increasing diameter of cable 40. The cable 40 is retained within the passageway in that the slot 30 narrows upwardly whereby movement of the cable upward out of the slot is also resisted.
COMMERCIAL EMBODIMENT
63 3M Corporate has marketed a commercial embodiment of the Patent in a product known as the "3M 10 pair Modular Connector" (the "3M connector"). The 3M connector is made in three versions: pluggable, splice and half-tap. In this context, "splice" is a term that describes a connector which permanently connects two or more wires. "Half-tap" describes a connector which allows tapping onto an existing wire within the connector so that an external wire can be T-spliced to it (thereby enabling cable rearrangements to take place without interruption to services). "Pluggable" is a term used in relation to a connector which allows the wires to be connected and disconnected without removing the wires from the connector (like a plug-socket connection).
THE OFFSET PRINCIPLE
64 The claimed invention is a connector for insulated conductors, particularly (but not exclusively) for electrical communications in which the retaining means for the conductor is simply combined with strain relief (Specification p 3, lines 1-4). The summary states that it is essential to the invention that the tongues are shaped or are connected to the walls of the passageway
"such that the tongues are uni-directionally resiliently deformed towards one end of the passageway and toward the contacting element within the passageway."
65 Dr Stark's evidence, which I accept on this point, was that the key geometrical feature required of the tongues is that the tip at the point of contact with the conductor or wire be closer to the contact element than the centroid of the base of the tongues to the side walls of the passageway. Mr Weir said in evidence that the "centroid" is simply the central joining point of the tongue, although the evidence did not explain precisely how the central point is to be ascertained. It is this geometrical feature which causes each tongue, as required by Claim 1, to deflect towards the electrical contact when the conductor is inserted. This in turn produces what was generally described in evidence as the "self-locking action" that provides strain relief when an axial force is applied (as shown in Figure 3 of the specification). If the tongues were to deflect away from the contact element they would fail to grip the wire if, for example, the wire was pulled out along the axis of the passageway.
66 Dr Stark explained this geometric feature by means of a diagram which exemplified the embodiment illustrated in Figures 2 and 3 of the Patent.
67 The diagram shows that the point of the tongue that contacts the conductor is closer to the electrical contact than the centroid of the base of the tongue. Dr Stark's evidence was that the centroid is placed further away from the contact element by reason of the flute, but the diagram does not place the flute precisely at the point of joinder of the tongue to the wall. This contrasts with Figure 2 in the Patent which shows the flute thinning the tongue at its point of contact with the wall. Although I do not think that Dr Stark's diagram accurately reproduces the position of the flute, nothing turns on this for the purposes of explaining the offset principle.
68 The point of contact of the tongue with the conductor is placed closer to the contact element by the shape of the tongue, in particular the chamfer. The force "F" applied to the tongue on insertion of the cable (at a right angle to the cable), combined with the offset "d" (that is, the offset between the line of force and the centroid), causes a bending moment to be applied to the tongue. Accordingly, the tongue inevitably flexes and rotates towards the electrical contact. The greater the value of "d", the greater the propensity for the tongue to move in the one direction as the result of the force "F". If "d" were zero, the tongue could deflect either way, or simply buckle.
69 An offset can be created by a variety of means. The embodiment illustrated in Figures 2 and 3 uses a combination of a flute and chamfer. An offset can also be created, for example, by the shape of the tongue alone, or by the angle of the tongue from its base at the wall to the point of contact with the cable. The value of "d" will vary according to the particular mechanism.
70 I should note that Mr Weir challenged Dr Stark's view that a tongue can be deflected in the required direction only if there is an offset. He said that Dr Stark had incorrectly assumed that contact forces between the tip of the tongue and the conductor's insulation will only ever act in a lateral direction (that is, at right angles to the passageway axis). Mr Weir agreed that in order to achieve uniaxial deflection of the tongue towards the electrical contact there must be some asymmetrical contact between the tongue and the wire. He said, however, that there could be cases where the offset "d" is zero, yet uniaxial deflection can be achieved.
71 I did not understand 3M to challenge Mr Weir's qualification to Dr Stark's analysis. Rather, Mr Catterns approached the case on the basis that if the offset were present the required uniaxial deflection could be obtained. The parties' final submissions did not suggest that anything of substance turned on whether Dr Stark had been too absolute in his approach.
MECHANISM OF DEFLECTION
72 Mr Weir explained that the fluted embodiment of the claimed invention incorporated the flute in order to weaken the tongues, thereby promoting uni-axial deflection. He undertook a comparison of the flexural characteristics of the fluted embodiment and that of the Tyco product. He considered that the fluted embodiment of the claimed invention deformed in a manner similar to a hinged door, with most flexure occurring in the region of the flute and little deformation occurring along the length of the tongue. Mr Weir's measurements showed that, in the case of that embodiment, about 75 per cent of the total curvature is attributable to the fluted region. The degree of curvature of the tongue of the fluted embodiment drops off sharply at a point about twenty per cent of the length of the tongue away from the wall. There is, however, some slight curvature over the whole remaining length of the tongue (other experts suggested that all of the flexure of the tongue takes place at the flute but they had not carried out Mr Weir's analysis). It follows that although Figure 3 in the Patent seems to show no curvature of the parallel sides of the tongue after insertion of the cable, there is a slight curvature as the result of the transverse force applied to it. I accept Mr Weir's evidence on this point.
73 The body of the specification refers to an embodiment of the invention providing that the wall of the tongues facing away from the cable merge into the wall of the passageway through a radius (27 in Figure 2). As Professor Frost explained, the radius is a structural necessity to avoid a stress concentration at the junction of the tongue and the wall. If there were no radius there would be what he described as a "sharp corner". In the absence of a means of avoiding stress concentration, the tongues could break off from their attachment points. The stress concentration occurs upon the application of a load to the tongue, which in the case of embodiment produces a deflection of the tongue.
THE TYCO CONNECTOR
74 The Tyco connector consists of a double sided plastic body (integer 1 in the Patent) having provision for the attachment of 10 wires per side. There are two clear plastic covers, one for each side, that are clipped to the body after attachment of the conductors. An internal Tyco publication describes the three components, respectively, as a cover, a body and a base (or protector).
75 Mr Weir described the Tyco connector as an electrical connector of the IDC type. He accepted that the Tyco connector, like the invention described in the Patent, has a resiliently deformable retaining element that simultaneously provides transverse retaining means and axial strain relief (although Mr Weir considered the form of the retaining element to be distinct from that disclosed in the Patent). The IDC contact element, together with a wire-cutting blade and the resiliently deformable tongues that provide wire retention and strain relief, are located within a rectangular box-like structure. The walls of the box are in a recess when compared with the width of the passageway leading to it.
76 A number of magnified photographs of the Tyco connector were in evidence. They are not easy to reproduce, but Figure HS3 (part of an Exhibit to Dr Stark's affidavit) shows a portion of the body of the Tyco connector. Each "box" contains the blade, contact element and resiliently deformable tongues. The box at the right has a wire or cable inserted from above, with the consequence that the tongues are deflected towards the contact element. The dotted line shows the axis of the passageway leading to the box on the left. (There was a dispute as to whether the passageway should be regarded as continuing into the box.) The numbers superimposed in the photograph refer to the integers of claim 1 of the Patent said by Dr Stark to be present in the Tyco connector. (There was no dispute that integer 1 is present.)
77 Mr Weir prepared a sketch showing the arrangement of the strain relief and wire retention features of the Tyco connector. The sketch shows the general lay-out of the supporting box and the blade, contact element and tongues within the box. Some of the dimensions are, however, approximate.
(The text of Mr Weir's notes has not been reproduced.)
78 Dr Stark exhibited a magnified photograph of a frontal view of the resiliently deformable tongues (the retaining elements) in the Tyco connector. The photograph has superimposed on it measurements taken by Dr Stark. These show, inter alia, that the slot between the tongues widens from the narrowest point (0.28 mm), at first rapidly (to 0.5 mm), then more gradually towards a point near the base (to 0.58 mm) and finally more rapidly again to the base. The narrowest width of the slot between the retaining elements is less than the diameter of any wire to be inserted. The single numbers superimposed on the photograph record the integers of claim 1 of the Patent said by Dr Stark to be present in this portion of the Tyco connector.
79 The expert witnesses offered somewhat varying descriptions of the characteristics of the Tyco connector, although there was a good deal of common ground. Dr Stark described each Tyco tongue as curved in shape and as having "two thick planar pieces with a buttressed connection to the passageway wall". In cross-examination he agreed that each tongue essentially comprises two pieces at different angles, together with a buttressed portion located at the point where the underside of the tongue joins the wall. Dr Stark said that the buttressing is achieved by filling in the acute angle that would be created if the planar portion further from the slot continued to the wall.
80 Mr Weir, in his affidavit, said that the Tyco tongues are each angular in shape and consist of three sections lying in three distinct planes either inclined to or offset from one another. The first, described by Mr Weir as lying in the base plane, projects from the wall of the supporting box. The second is inclined at an angle of 35° to the base plane. The third is angled towards the electrical contact at an angle of 10° by reference to the base plane. Mr Catterns submitted that Mr Weir modified his view in cross-examination by drawing a sketch (Exhibit 5) which showed the largest part of the tongue extending to the wall at an angle of 35°, with a triangular buttress added on the base of the triangle being at right angles to the wall. Exhibit 5 was drawn in the context of a discussion of Mr Weir's concept of a "base feature" as applied to the Tyco connector. He was concerned to argue that the "base feature" of the Tyco tongue was a rectangular shape, a view that requires the triangular buttress to be regarded as a subsidiary feature. I do not regard that part of Mr Weir's evidence as detracting from his view that each of the Tyco tongues has three distinct sections.
81 Professor Frost said that neither tongue could be regarded as planar. He meant (as Mr Catterns accepted) that each tongue is curved and therefore cannot lie in a particular plane. Professor Samuel rejected the notion that each tongue could be said to be in a single plane. He described the tongues or fingers of the Tyco connector as forming a shallow "U" shape in plan view.
82 Each of the tongues of the Tyco connector is buttressed where the tongue joins the walls of the recessed box. The "buttress" (a word used by all the expert witnesses who addressed the point) is located at the point where the side of the tongue facing the contact element joins the wall. This corresponds to the region shown in the diagrams in the Patent where the relieving flute is provided. It was common ground that the tongue thins at a point about 15 to 20 per cent of the total length of the tongue away from the wall. That is, to use Mr Catterns' phrase, the point of thinning is about 15 to 20 per cent "offshore" from the wall. From that point to its free tip the tongue is of uniform cross-section and thickness.
83 The buttress performs two functions. First, it resists deflection of the tongue in the region where it is joined to the wall. It therefore forces the remainder of the tongue to carry the bending force when it is applied. Secondly, it reduces the bending stresses at the wall and thus diminishes the risk of fracture. In the latter sense it performs a function similar to that of the radius depicted in Figure 2 of the Patent.
84 It follows that the buttress is the least likely area of the Tyco tongue to experience curvature. As Mr Weir explained, little deformation occurs in the buttressed area, but significant curvature occurs along the further length of the tongue. Mr Weir's measurements showed that the maximum point of curvature on the Tyco tongue occurs at the point where the buttress ends (that is, the point about 15 to 20 per cent offshore). Mr Weir estimated that at a point about 40 per cent along the length of the Tyco tongue, the net rotation of that tongue was about the same as at a point about 20 per cent along the length of the fluted embodiment of the Patent. Mr Weir also pointed out that the maximum bending stress experienced by the Tyco connector occurs at the point of greatest curvature. However, the degree of stress is significantly lower than that experienced by the fluted embodiment.
85 Tyco's experts used different language to describe the action of the tongues in the Tyco connector, although the substance of their descriptions did not differ materially. Mr Hunter, whose evidence I accept, described the Tyco tongues as a pair of "flexible cantilevered arms which bend forwards in a parabolic manner". He distinguished this from the "hinged approach", whereby the flexure happens at the base of the hinge and the retaining element is closed rather like a pair of gates or swing doors. He regarded the approaches as completely different from an engineering design perspective. He expressed the view that the cantilever approach is superior because "the strength of the cantilever is engendered by its join to the wall" while the hinged approach relies on a structural weakness resulting from thinness at the fluted point of attachment. Mr Hunter explained that the portion of the cantilever joined to the wall contributes to its strength because it is made sufficiently thick and of the right shape to resist the binding stresses placed on it.
86 Mr Weir said that the tongues in the Tyco connector experience uniformly increasing flexure and stress all along their length, increasing from negligible levels at their free end to a maximum near the supporting wall. He likened their behaviour to a flexible diving board, as distinct from the action of a door hinge. In cross-examination he accepted that the force applied to the Tyco tongues by the insertion of a cable causes them to "bend like a bough". Mr Weir also gave evidence, which I accept, that the "gripping effect" of the tongue in the Tyco connector is more than thirty per cent greater than the gripping effect of a comparably proportioned tongue designed in accordance with the claims in the Patent. Contrary to a submission made by Mr Catterns, I do not regard Mr Weir's evidence as limited to the "initial" gripping effect.
87 It was common ground that the Tyco connector does not have tongues with "deflecting surfaces" adjacent to the slot. In particular, it does not have chamfers.
88 The Tyco connector also has features that, according to Dr Stark's unchallenged evidence, are similar to those of the 3M connector. These features include the following:
* the dimensions of the Tyco connector, including height, length and width;
* the distance between the channels or passageways for the wires;
* the angle of the corner cut;
* the centring grooves at the longitudinal ends of the connector (which in the case of the 3M connector are used to co-align the bodies and the covers of the connector in the application tool); and
* the colour.
PRINCIPLES OF CONSTRUCTION
89 The first task of the Court in infringement proceedings is to construe the patent in suit in order to determine the precise nature and extent of the rights claimed by the patentee. The principles of construction of patent claims were helpfully summarised by Hely J in Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331, at 347-350. I do not think it necessary to set out that passage in full. It is enough to say that I agree with the principles stated by his Honour. In particular, I agree with Hely J's observation that the specification must be read as a whole to see how words have been used and as part of the process of determining whether the terms of the claim are clear and unambiguous. This is consistent with a passage from the judgment of Lockhart J in Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385, at 391 put at the forefront of 3M's submissions:
"It is well established that there are no special rules for the interpretation of patent specifications, which are to be interpreted in the same way as any other document upon ordinary principles of interpretation. The words used in a specification are to be given the meaning which the normal person skilled in the art would attach to those words, both in the light of his own general knowledge and in the light of what is disclosed in the body of the specification."
90 I would add four comments. First, as Hely J notes (at 349), the hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date. Accordingly, as the Full Court said in Populin v HB Nominees Pty Ltd (1982) 41 ALR 471, at 476-477:
"The complete specification must not be read in the abstract but in the light of common knowledge in the art before the priority date, bearing in mind that what is being construed is a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood.... The essential features of the product or process for which it claims a monopoly are to be determined not as a matter of abstract uninformed construction but by a common sense assessment of what the words used convey in the context of then-existing published knowledge. As Lord Diplock (with whom the other members of the House of Lords agreed) commented in Catnic Components Ltd v Hill & Smith Ltd (1981) 7 FSR 60 at 65-6:`...a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (ie `skilled in the art'), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called `pith and marrow' of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge...'."
91 Secondly, the High Court recently addressed, albeit briefly, the approach to construction in Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 177 ALR 460, at 466:
"Where the question concerns infringement of a claim or the sufficiency of a claim to `define' the invention, it has been held in this court under the 1952 Act that the plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification (Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91; (1961) 106 CLR 588 at 610). However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification (Interlego AG v Toltoys Pty Ltd [1973] HCA 1; (1973) 130 CLR 461 at 479).
The well-known passage from Welch Perrin, a case involving an alleged failure to define an invention, is as follows:
"If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, that, of course, is an end of the matter. But this objection is not established by reading the specification in the abstract. It must be construed in the light of the common knowledge in the art before the priority date. The general principles governing the construction of specifications are well known, and no lengthy reference to them is necessary. It is, however, fitting that we remind ourselves of the criterion to be applied when it is said that a specification is ambiguous. For...we are not construing a written instrument operating inter parties, but a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood. Nevertheless, it is to be remembered that any purely verbal or grammatical question that can be resolved according to ordinary rules for the construction of written documents, does not, once it has been resolved, leave uncertain the ambit of the monopoly claimed. The specification must be read as a whole. But it is a whole made up of several parts, and those parts have different functions. Courts have often insisted that it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. Similarly, if a claim be clear it is not to be made obscure simply because obscurities can be found in particular sentences in other parts of the document." (Citations omitted.]
As Mr Catterns noted, this passage twice indicates that the specification must be read "as a whole". I do not understand either Welch Perrin or its endorsement in Kimberly-Clark as inconsistent with the approach taken by Hely J in Flexible Steel.
92 Thirdly, as Hely J noted (at 350), evidence can be given by experts as to the meaning which those skilled in the art would give to technical or scientific terms and phrases and as to unusual or special meanings given by such persons to words which otherwise might bear their ordinary meaning. But the construction of the specification is ultimately for the Court.
93 Fourthly, it is important to bear in mind that it is the claim that defines the invention. Moreover, a
"claiming clause operates as a disclaimer of what is not specifically claimed, and for such disclaimer there may be reasons known to the inventor but not to the Court":
Fellows v Thomas William Leech Ltd (1917) 34 RPC 45, at 55, per Lord Parker, cited by Dixon J in Walker v Alemite Corporation [1933] HCA 39; (1933) 49 CLR 643, at 656. The limitations on using the body of the specification as a basis for construction of the claims were stated by Lord Russell of Killowen in Electrical and Musical Industries Ltd v Lissen (1939) 56 RPC 23, at 39:
"It is not permissible, in my opinion, by reference to some language used in the earlier part of the specification, to change a claim which by its own language is a claim for one-subject matter into a claim for another and a different subject matter, which is what you do when you alter the boundaries of the forbidden territory. A patentee who describes an invention in the body of a specification obtains no monopoly unless it is claimed in the claims. As Lord Cairns said, there is no such thing as infringement of the equity of a patent: Dudgeon v Thomson (1877) 3 App Cas 34."
CONSTRUCTION OF THE CLAIMS: INTEGERS 6 AND 10
3M'S SUBMISSIONS
94 Mr Catterns emphasised the necessity of construing the claims within the context of the body of the specification. He also emphasised the need to read claim 1 as a whole and not to be unduly influenced by the division of the claim into integers.
95 Mr Catterns relied particularly on the reference in the body of the specification to an embodiment providing for deflecting surfaces formed on the tongues adjacent to the slot. The specification says that the deflecting surfaces cause the tongue to be deformed resiliently by the insertion of the cable such that the ends of the tongues face towards the cable end. Mr Catterns also relied on the later reference to the shape of the tongues producing deformation upon insertion of the conductors in order to achieve strain relief. These references, so he argued, suggested that, in context, claim 1 is not confined to the hinging mechanism described in the body of the specification.
96 Mr Catterns contended that integer 5 ("retaining elements being resiliently deformed when a... cable is introduced into [the] passageway to retain [the] cable against outward movement") supported this aspect of the argument. He argued that integer 5 is to be regarded as a conventional limitation by result, the result being the retention of the cable against outward movement. Integer 5, although not expressly requiring deflection of the retaining elements towards the contact element, is to be construed (so the argument ran) as requiring that result, since skilled addressees would understand that the result could be achieved only by resilient deformation towards the contact element. So much had been recognised by Tyco's expert witnesses. Moreover, integer 5 is to be read as embracing two methods of reaching the required result. The first comprises retaining elements which swing like a hinge, as described in the specification to the Patent. The second comprises retaining elements which, to use the language of Mr Weir, "bend like a bough" as in the case of the Tyco connector.
Within this framework, 3M submitted that integer 6 must be understood to be concerned with three features of the flexible retaining elements introduced in integer 4:
* their shape, in the sense that the expression "tongues" refers to protrusions having a length greater than their thickness;
* their position, in the sense that the tongues are to be found on opposite walls of the passageway, that is their roots in the walls are located opposite each other; and
* their orientation, in the sense that the general orientation of the tongues is to be "approximately perpendicular" to the axis of the passageway.
According to Mr Catterns, the requirement that the tongues be in a plane approximately perpendicular to the axis of the passageway is concerned with orientation, not shape.
97 The next step in 3M's argument relied heavily on the evidence of Dr Stark. He said this:
"In my opinion, the shape of the tongue between its tip and its base is of no functional significance providing the tongue is approximately perpendicular to the axis of the passage (that is, is not precisely perpendicular but has an offset as discussed above) and has the required flexibility to be deflected by contact with the wire's insulation without cutting that insulation."
Dr Stark took the view that integer 6 refers to the general orientation of each tongue. He then identified the means for ascertaining this orientation:
"In my opinion, integer 6 describes the general orientation of the tongues relative to the axis of the passageway, i.e. the words are used to require the general orientation of the tongues to be in a plane approximately perpendicular to the axis of the passageway. In my view, they are not used to describe the three dimensional shape of the tongues, but are used to describe the tongues' general direction and that general direction has to be `approximately perpendicular' to the axis of the passageway. As an engineer, I view this general orientation as defined by the plane lying between the tip of the tongue that initially contacts the insulated conductor and the attachment point of the tongue to the wall."
In evidence he explained that the plane is determined by a line drawn between the centre of the line of attachment of the tongue to the wall (the centroid) and the tip of the tongue that comes in contact with the cable. Mr Catterns thus submitted that, insofar as integer 6 deals with orientation, it requires each tongue to be oriented so that an appropriate offset will arise, thereby ensuring that the tongue meets the conductor in a way that causes the appropriate resilient deformation and strain relief.
98 3M's construction of integer 5, so Mr Catterns argued, supports a broad construction of integer 10. Specifically, he submitted that the expression "means for affording deflection" in integer 10 refers to "means that allow or permit deflection" in the required direction, as distinct from "means that supply, furnish or confer deflection" (the construction supported by Tyco). Mr Catterns pointed out that the deflection of the tongues is caused by the force created when the cable is inserted into the passageway. He submitted that it is enough to satisfy the terms of integer 10 that the means of joinder of the tongues to the wall does not impede their resilient deformation in the required direction. It followed, so he argued, that the Tyco connector possesses integer 10 because, at worst, the buttress at the point of attachment does not impede deflection of the tongues in the required direction.
99 If, contrary to Mr Catterns' first submission, integer 10 requires the means of joinder of the tongues to the wall to contribute affirmatively to the resilient deformation of the tongues in the required direction, he submitted that the Tyco connector nonetheless satisfies integer 10. He advanced several reasons why this is so:
* First, the Tyco tongues are set in a recess in order to increase their length and therefore their flexibility for a given tongue width. Hence they are joined to the walls by a means which affords deflection.
* Secondly, in the case of the Tyco connector the thinning of the tongue at the point where the buttressing ends (the point about 15 to 20 per cent offshore from the wall) contributes to the deflection of the tongues. In substance, the thinning of the tongues at that point constitutes or is part of the means by which the tongues are joined to the walls.
* Thirdly, the correct view is that the longer part of the Tyco tongue joins the wall at an angle of 35°. On this view, the buttress is to be regarded as a triangular addition to one side of the angular arm and not a discrete portion of the tongue. The angle of joinder constitutes a means for affording deflection in the required direction.
REASONING
INTEGER 6
100 In construing integers 6 and 10 of claim 1, the claim is of course to be construed in the light of common general knowledge in the art before the priority date. What is common general knowledge is to be assessed by reference to the understanding of the notional skilled addressee. For reasons explained later (see [172] below), I regard the skilled addressee as represented by a team including persons experienced in telecommunications engineering; persons with expertise in engineering principles relating to metal and plastic components; persons skilled in the design of plastics; electrical engineers and electronic design engineers; and persons experienced in the use of electrical connectors in the telecommunications industry. Claim 1 is to be read in the light of the offset principle (see [64]-[71] above) since, on any view, that principle was well known to the notional skilled addressee before the priority date. The skilled addressee would also have understood that the hinge mechanism described in the specification and the significance of deflecting surfaces or chamfers in achieving deflection in a particular direction. It was also not in dispute that engineers would understand that in practice it is impossible to make manufactured features such as tongues in a module which are perfectly perpendicular to a particular axis.
101 The evidence of experts in the relevant field can be taken into account in ascertaining the meaning of technical terms or unusual or special meanings to be given to words which otherwise might bear their ordinary meaning. In this connection, all the expert witnesses who directed their attention to the issue agreed that the expression "plane", in geometric terms, is a two-dimensional concept and is not apt to describe a three dimensional object. Since integer 6 refers to three dimensional objects, namely tongues, lying "in a plane", it is clear that the word is not being used in a strict geometric sense.
102 While Dr Stark disagreed with the other expert witnesses as to the meaning of integer 6, he did not dispute that the word "perpendicular", in the fields of engineering, mathematics and geometry, means at right angles or 90° to a given line or surface. This understanding was expressly stated by Mr Weir and Mr Georgevits, and I accept their view. This is also one of the primary dictionary meanings of the term.
103 Integer 5 explains why the retaining elements are present and makes it clear that the retaining elements must be resiliently deformed when a cable is introduced into the "passageway" towards the contact element. In effect, this is the way Mr Georgevits understood the technical language of integer 5 as shown in this passage from his cross-examination:
"...when you read those words `said retaining elements being resiliently deformed', down to `outward movement' [in integer 5] you know which direction the retaining elements are going to be deformed, don't you?---From reading those words?Yes. In particular I am focusing on `to retain said cable against outward movement'?---Right.
We know which way they are going to bend, don't we?---From reading claim 1 of the patent, it tells you that the retaining elements bend towards the contact element.
If they are being resiliently deformed when the cable is introduced to retain said cable against outward movement, the way they are deformed has to be towards the contact element, doesn't it?---Well, it does."
Mr Weir gave similar evidence.
104 The fact that integer 5 teaches these requirements does not establish that integer 5 conveys the means by which the required deflection is to be achieved. It is necessary to refer to integers 6 and 10 to understand how the required deflection is to be brought about. In particular, integer 10 teaches that the means for joining the tongues to the walls must afford the deflection in the required direction.
105 It seems to me that there is a fundamental textual difficulty with 3M's contention that integer 6 is intended to refer to the offset which constitutes the key geometrical feature underlying the claim. The language used in integer 6 is that "the tongues [must be] formed on opposite walls of [the] passageway in a plane approximately perpendicular to [the] axis of the passageway". On 3M's approach, the drafter has used the words "approximately perpendicular" to refer to a plane which, in practical terms, must depart significantly from perpendicular if the cable is to be retained against outward movement. In other words, 3M construes "approximately perpendicular" to mean "sufficiently off the perpendicular to ensure that the tongues deflect towards the contact element". In my opinion, this would be a quite remarkable use of language, whether viewed from the perspective of the ordinary meaning of the words used or the perspective of the skilled addressee reading the patent.
106 As Mr Yates submitted, if the drafter had intended to convey that claim 1 embraces tongues formed on opposite walls of the passageway which deflect in the required direction by utilising the offset principle it would have been easy to do so by clear words. The description of the Muelhausen Patent in the specification of the Patent states that the "strain relief means are defined by tongues extending at an angle with respect to the longitudinal axis of the cable". The drafter of claim 1 therefore did not have to look far for an appropriate form of words to convey the idea that each tongue must be at an angle sufficiently off the perpendicular to ensure that the tongue deflects towards the contact element.
107 There is a second textual difficulty with 3M's approach to construction. Integer 6 teaches that the tongues must be "in a plane approximately perpendicular to [the axis]". In my opinion, that language clearly envisages that both tongues will be substantially in a single plane which is itself approximately perpendicular to the axis. Integer 6 does not refer to "each plane"; nor does it use the word "planes" or any other language to suggest that each tongue must be in its own distinct plane. On 3M's construction, not only must each tongue lie in its own plane (different from the other), but each plane must be materially off the perpendicular. The two tongues cannot lie in the same plane and indeed must meet in the form (more or less) of an inverted V. Once again, if this was the result intended by the drafter of claim 1, it is an extraordinarily opaque use of language.
108 The evidence made clear some of the difficulties with 3M's construction of integer 6. None of the witnesses had measured precisely the angle of departure from the perpendicular in Figure 2 of the Patent specification. Mr Catterns appeared to accept, however, that the angle, measured by a protractor, was about 14°. 3M's position was that each tongue's departure from the perpendicular by 14° was consistent with the tongues being in a plane approximately perpendicular to the axis of the passageway. Somewhat more strikingly, 3M was forced to submit that the tongues in the Tyco connector could be described as being in a plane approximately perpendicular to the axis when each tongue departs from the perpendicular by about 20° (the angle being measured from centroid to tip). Moreover, in the course of cross-examination, Dr Stark conceded that his conception of approximate perpendicularity necessarily encompassed any angle off the perpendicular where the resulting offset would facilitate deflection in the desired direction. To this end, he was prepared to accept that any angle of up to 35º was approximately perpendicular for the purposes of integer 6. This seems to me to stretch language well beyond breaking point.
109 A further illustration of the difficulty presented by 3M's construction was given in Dr Stark's cross-examination. He was shown diagrams of "tongues" attached to a wall with the free end providing the point of contact with a conductor. The "tongues" included one having an elongated S shape and another having an exaggerated U shape. In each case Dr Stark conceded that if these were in truth tongues they satisfied integer 6. He attempted to avoid the apparent absurdity of this result by disputing whether the protrusions could accurately be described as tongues. It is not, however, clear why they could not be so described, given Dr Stark's view that a tongue is something which is longer than its width. In any event, in my opinion, Dr Stark's responses show how far 3M's construction takes the reader of the Patent from a fair meaning of the words used in integer 6.
110 It is, perhaps, somewhat easier to reject 3M's construction of integer 6 than it is to ascertain precisely what the integer is intended to convey. In part this is because the word "plane" is used in a metaphorical rather than geometrical sense and in part because the claim is not explicit as to how perpendicularity from the axis of the passageway is to be determined.
111 In my view, however, it is clear that integer 6 teaches that both tongues must be substantially in a single plane which can be regarded as approximately perpendicular to the axis. That seems to me to be the ordinary meaning of the language used by the drafter. In this context, the notion of approximate perpendicularity allows for small variations in the manufacturing process. This approach is reinforced by Figures 2 and 3, which depict an embodiment of claim 3 which is in turn dependent on claim 1. It is also reinforced by the evidence of Tyco's expert witnesses, especially Mr Weir and Mr Georgevits. Their evidence can be taken into account in determining how a reader skilled in the relevant art would construe the claim, since integer 6 uses technical expressions in a special way.
112 It also seems to me clear that integer 6 is concerned both with the orientation and shape of the tongues. It is the tongues that must be formed in a plane approximately perpendicular to the axis of the passageway. That language assumes that the tongues have a particular shape from which it is possible to decide whether they are in the required plane. The language also assumes (contrary to 3M's approach) that the orientation of the tongues can be perpendicular, or approximately so, yet still achieve the object of retention of the cable against outward movement. This view is again reinforced by the evidence of Tyco's expert witnesses, including Professor Samuel.
113 I think that the task of construction is assisted by appreciating that claim 1 proceeds by steps. The location of the axis is identified (integer 2). The requirement for a contact element is established (integer 3), as is that for flexible retaining elements which are capable of resilient deformation towards the contact element (integers 4 and 5). Thereafter the "effect of the...sequence of the claims...is progressively to narrow the area of monopoly claimed": Rehm Pty Ltd v Webster Security Systems (International) Pty Ltd (1988) 81 ALR 79, at 92, per Gummow J. Integer 6 identifies the retaining elements as tongues which must be joined opposite each other in a plane approximately perpendicular to the axis. Integer 6 does not, however, identify the means by which resilient deformation in the required direction, so as to retain the cable against outward movement, is to be achieved. Integer 7 introduces the concept of a narrow slot formed by the opposing ends of the tongues, the slot having the characteristics identified in integer 8 and 9. Integer 10 identifies the means by which the tongues are to be resiliently deformed towards the contact element, namely the means by which they are joined to the walls of the passageway. Further refinement occurs in later claims, such as claim 3 which introduces the chamfers at the sides of the tongues and claim 5 which narrows the means for affording deflection of the tongues to the combination of a radius and flute.
114 Mr Weir expressed the view that integer 6 describes the "base feature" of the tongues unmodified by subsidiary features such as the flute, radius or chamfers. He stated that the concept of a base feature is neither mathematical nor impressionistic, but is used by engineers and designers to define the shape of three-dimensional objects. According to Mr Weir, the concept has the advantage that it allows the underlying shape of the tongues to be assessed without subsidiary features such as a flute or radius. In my view, the concept of a base feature is a helpful notion in understanding the teaching of integer 6 and is not affected by Mr Catterns' criticism that Mr Weir took the concept too far in other contexts. Integer 6 contemplates that the tongues are to be flat in the sense that they have parallel straight sides for most if not all their length. Bearing in mind that claim 1 has not yet introduced the concept of a flute and radius, either in general terms (integer 10) or specifically (claim 5), in essence the claim envisages that the base feature of each tongue is essentially rectangular in shape, although the skilled reader would appreciate that some modification to this shape is required to achieve the necessary deflection of the tongues in the direction of the contact element.
115 There is then a question as to how claim 1 contemplates that the perpendicularity of the tongues is to be ascertained. One approach is to construe integer 6 as requiring that each straight side of one tongue be in the same plane as its counterpart on the other tongue and that each plane be approximately perpendicular to the axis of the passageway. Another is, as Mr Weir suggested, to take the mid-plane of the base feature as the point of reference, that is the plane about which the entire base feature is symmetrical. On this approach, the mid-plane of each tongue would have to lie in the same plane, being approximately perpendicular to the axis of the passageway. A third may be to require one straight side of a tongue to be in the same plane as the corresponding straight side of the opposite tongue, such plane to be approximately perpendicular to the axis of the passageway.
116 I am inclined to prefer the first approach, which is consistent with the drawings in the Patent specification showing both tongues with parallel straight sides for most of their length. As will become apparent, it is not necessary for the purposes of this case to reach a final conclusion on this question of construction since, in my view, the Tyco connector does not possess integer 6 regardless of which of the three constructions is adopted.
117 I appreciate that, as Mr Catterns pointed out, the effect of manufacturing imperfections may be that the counterpart straight sides of each tongue lie in slightly different planes, although that difference would presumably not be apparent to the naked eye of an observer examining an embodiment of the claimed invention. It seems to me that integer 6, on a purposive construction, covers the case where the tongues lie in substantially the same plane, in particular where any departure comes about because of imprecision inherent in the manufacturing process. A skilled addressee, in my opinion, would have understood the claim in this way.
INTEGER 10
118 The fundamental dispute between the parties concerning the interpretation of integer 10 was whether the expression "means for affording deflection of [the] tongues" refers to means which enable or permit deflection (3M's contention) or means which supply, furnish or confer deflection (Tyco's contention).
119 It must be borne in mind that integer 10 is not concerned merely with the means for affording deflection of the tongues, but with the means for affording resilient deformation towards the contact element when a conductor is inserted in the passageway. Integer 10 is the only integer which addresses the means by which the deflection of the tongues towards the contact element is to come about. In my opinion, integer 10 is intended to limit the monopoly asserted by 3M to cases where the means by which the tongues are joined to the walls contribute materially to the required result, namely resilient deflection of the tongues towards the contact element when a conductor is inserted into the passageway.
120 This conclusion is consistent with the ordinary meaning of the words used in integer 10. The word "afford" is defined by the Macquarie Dictionary to mean
"4. Supply, furnish.... 5. To be capable of yielding or providing."
Thus the word "afford" itself suggests that the means by which the tongues are joined to the wall must make a material contribution to the required result. This view is reinforced by the expression "such that", which links the means of joinder of the tongues to the wall with the required directional deformation of the tongues. I think it is also reinforced by the stepped approach taken by the drafter to the formulation of claim 1.
121 Moreover, on 3M's construction, integer 10 would add nothing of substance to what is already said in claim 1. On that construction, integer 10 merely says that the means of joinder must not be such as to impede the resilient deformation which is required to retain the cable against outward movement. As Mr Catterns acknowledged in argument, if integer 5 is construed as he suggested, it is self-evident to the skilled addressee that the means of joinder to the walls must not impede the directional deformation required to retain outward movement. An integer in a claim should not lightly be read as adding nothing to the claims, especially where it is conceded that the integer is essential. Tyco's expert witnesses did not read integer 10 this way and I regard their evidence, particularly that of Mr Weir and Mr Georgevits, as supporting the conclusion I have reached.
122 It is of course true that the direction of the force applied upon the insertion of a cable into the passageway contributes to the deflection of the tongues. But integer 10 is concerned with a means for affording deflection of the tongues such that they are resiliently deformed towards the contact element. The fact that the insertion of the wire contributes to the deflection does not detract from the teaching of integer 10, namely that the means of joinder of the tongues to the walls must materially contribute to deflection in the required direction.
123 This does not mean that integer 10 is confined to the embodiment incorporating the flute and radius as illustrated in Figure 2 of the Patent. There are other ways in which the means of joinder of the tongues to the walls might afford the deflection in the required direction. For example, a symmetrical thinning of the tongue precisely at the point where it meets the passageway wall could be a means for affording deflection in a particular direction. Nor does this construction of integer 10 have the consequence that tongues which achieve the required result by reason of their shape are necessarily excluded from the scope of claim 1. If the shape and means of joinder both materially contribute to the required deflection, the terms of integer 10 may be satisfied.
124 I appreciate that this conclusion produces the result that the claim is narrower than the body of the specification might suggest. In particular, integer 10, on the construction I prefer, excludes from the claims tongues which achieve the required deformation by reason of their shape, at least where the operative feature (such as chamfers at the free ends of the tongues) is unconnected with the means of the tongues' joinder to the walls of the passageway. It is of course appropriate to read the claims in light of the specification as a whole. But I think that to construe integer 10 in the manner suggested by 3M would go beyond that principle. It would involve using the body of the specification to modify the language deliberately chosen by the patentee. Just as there are reasons why 3M might have chosen to limit the claim by integer 6 (for example, to avoid a possible difficulty in novelty in view of the prior art), so there are reasons why 3M might have chosen to limit the claimed monopoly to the case where the means of joinder of the tongues to the walls materially contributes to the required deflection.
DOES THE TYCO CONNECTOR INFRINGE?
THE PRINCIPLES
125 It is trite law that, as said by the Full Court in Populin v HB Nominees Pty Ltd (1982) 41 ALR 471, at 475:
"to establish infringement of a combination patent, the patentee must show that the defendant has taken each and every one of the essential integers of the patentee's claim. Therefore if, on its true construction, the claim in a patent claims a particular combination of integers and the alleged infringer of it omits one of them he will escape liability."
There was no dispute in the present case that the integers identified by Dr Stark were essential to 3M's claim. It follows that if any one of these integers is absent, Tyco escapes liability. No issue arises as to whether the Tyco connector contains a mere mechanical equivalent of a non-essential integer of the claim in the Patent.
126 As Mr Catterns accepted, there is no doctrine in patent law that a device which is merely the functional equivalent of a patented invention will constitute an infringement of the patent: Rodi and Wienenberger AG v Henry Showell Limited [1969] RPC 367, at 391, per Lord Upjohn; Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079, at [77], per Heerey J (whose dissent on the inessential integer issue did not affect this passage). Thus the mere fact that a product or process performs the same function as a claim does not establish that the product or process infringes the claim.
127 Reference was also made in argument to the principle of "substantial infringement". In particular, Mr Catterns relied on a passage from the judgment of Menzies J in Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd [1970] HCA 38; (1970) 180 CLR 160. That case concerned an invention relating to mixer tubes for use in gas burners. Menzies J said this (at 167-168):
"What I find happened is that the defendants, having simply copied articles of the plaintiff's manufacture, upon receipt in the middle of 1966 of a letter from the plaintiff's patent attorneys alleging infringement of letters patent 202348, consulted their own patent attorneys and thereafter modified their own manufacture by drilling the mixer tube to a very slightly concave, rather than a perfectly flat, base. In my judgment the modification so made did not prevent equipment manufactured and sold thereafter from constituting an infringement of the letters patent. Patent rights are not to be set at nought by such a subterfuge which I am satisfied added nothing to the equipment and was made merely in an attempt to take full advantage of the invention while avoiding infringement of the plaintiff's letters patent by a modification so small as to be insignificant. I find that the base of the mixer chambers, which the defendants manufactured and sold after the middle of 1966, was so close to the plaintiff's specification in that the degree of concavity was so slight that such manufacture and sale continued to amount to infringement.The cases do establish that, if the alleged infringement differs materially from an essential feature of the plaintiff's claim, there can be no infringement.... In the present case normality of the reflector is made an essential feature of the plaintiff's patent. As I have said, however, the modified manufacture since 1966 does not avoid that essential feature because the reflector as made thereafter is so close to being flat that the defendant's manufacture and sale still takes the plaintiff's invention."
It must be remembered, however, that the principle applied in the CIG Case and in Catnic Components v Hill, does not involve any "novel principle or new category of `non-textual infringement'": Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513, at 528-529 per Gummow J. The principle was recently applied by the majority in Azuko v Old Digger, at [45], per Beaumont J; at [161], per Gyles J.
INTEGER 6
128 Mr Catterns accepted that so far as integer 6 is concerned, 3M's case stands or falls on the question of whether or not the integer is concerned exclusively with orientation. For the reasons I have given, in my opinion integer 6 is concerned with both the shape and orientation of the tongues.
129 The Tyco connector does not possess integer 6. The opposing tongues do not lie substantially in a single plane. Nor does each individual tongue lie in a single plane. Each tongue has three sections (including the buttress), each one of which is in a different plane. I think that Professor Hunter was right when he said, from the perspective of a skilled addressee, that the tongues could not be described as "planar". Even if, contrary to my view, the relevant plane is that constituted by the largest straight portion of each tongue in the Tyco connector, the deviation from the perpendicular is 35°. It is impossible, in my view, to regard that portion of the tongue as "approximately perpendicular" to the axis of the passageway. Indeed, I did not understand Mr Catterns to submit otherwise. On any view of how integer 6 contemplates that the perpendicularity or otherwise of the tongues is to be ascertained, the Tyco connector's tongues cannot be said to be formed in a plane approximately perpendicular to the axis of the passageway.
130 In my view, it would not matter if Tyco had (as Mr Catterns submitted) deliberately copied some aspects of an embodiment of the claimed invention. The fact is that, on the proper construction of claim 1, integer 6 is not present in the Tyco connector. On no view can the absence of integer 6 be characterised as a mere "subterfuge" or the product of an over-literal interpretation of claim 1 in the Patent. As I have found, the Tyco connector incorporates a different engineering design from the claimed invention and operates more effectively so far as the "gripping" quality of the tongues is concerned
INTEGER 10
131 On the construction of integer 10 that I have adopted, an alleged infringing product does not satisfy that integer merely because the means of joinder of the tongues does not prevent them deflecting in the required direction. The fundamental difficulty confronting 3M is that the evidence clearly establishes that the buttressed area of the Tyco tongues, which is at the point of joinder with the walls, actually resists the deflection of the tongues when a cable is inserted into the passageway. As Mr Weir explained, the buttress resists deflection of the tongue in the region where it joins the wall and forces the thinner remaining length of the tongue to carry the bending force. There is a small amount of deformation in the buttressed area, but the maximum point of curvature occurs at the point offshore where the buttress ends.
132 Dr Stark acknowledged that the buttress makes the tongues "stiffer at the walls" and minimises stress concentration effects. He expressed the view that the buttressing does not prevent deflection because it is "balanced" by the relatively thinner length of the rest of the tongue. In cross-examination, he explained that he meant that:
"the tip deflection of the Tyco connecter, which is foregone by the use of the buttress, is compensated to some extent by the flexible main section of the tongue".
He accepted that it is not the buttress which ensures that the tongue deflects forward, but the existence of the offset. Dr Stark's evidence does not support the contention that the Tyco connector possesses integer 10, given what I regard as its correct construction.
133 As has been seen, the maximum point of deflection of the Tyco tongues occurs at a point fifteen to twenty percent offshore from the walls to which they are connected. Mr Catterns, attempting to make a virtue out of necessity, submitted that this point was sufficiently close to the walls to satisfy integer 10. But as Mr Hunter explained (see [85] above), the Tyco connector operates on a different engineering principle, for example, from the embodiment of the Patent which incorporates a flute at the point of joinder of the tongue to the wall and which results in the tongue functioning in a manner similar to a hinged door. Claim 1 is not, of course, confined to the fluted embodiment, but integer 10 teaches that the means by which the tongues are joined to the walls must afford deflection of the tongues in the required direction.
134 The fact that the maximum point of deflection of the Tyco tongues occurs reasonably close to the wall does not establish that the tongues are joined to the walls by means for affording deflection in the required direction. That the Tyco connector employs a different engineering principle from the fluted embodiment of the Patent strengthens the contention that it is not the means by which the tongues are joined to the walls that affords deflection in the required direction.
135 Nor do I think the fact that the Tyco tongues are connected to walls which are located within a recess assists 3M. The fact that they are so connected enhances the ability of the tongues to deflect (since their length, relative to their width, is increased). It says nothing, however, about deflection in the required direction, that is towards the contact element.
136 3M's final argument seemed to rest on the proposition that resilient deformation of tongues towards the contact element can be achieved (as Mr Catterns put to Mr Weir in cross-examination) by having each parallel-sided tongue meet the wall of the passageway at an angle. Mr Catterns contended that, in substance, the tongues in the Tyco connector join the walls at an angle of 35°, thereby creating, or at least contributing to, the offset required to ensure resilient deformation of the tongues in the appropriate direction. The argument was adverted to in written submissions, but really only developed in Mr Catterns' submissions in reply on the question of infringement.
137 One difficulty with the argument is that the evidence did not directly address the question of whether the Tyco tongues can be said to be attached to the walls at an angle. Dr Stark, for example, did not address this issue in his evidence. Consequently, Mr Catterns relied on evidence given by Tyco's witnesses, usually given in the context of addressing other issues in the case.
138 It will be remembered that Mr Weir prepared a plan view of what he described as the "supporting box" of the Tyco connector, for the purpose of demonstrating that the tongue in the Tyco product thickens in the region of its joinder with the supporting wall. That plan view, which has been reproduced earlier (see [77] above), shows that on the side nearer the contact element, the buttressed portion of the tongue extends more or less at right angles from the wall for some distance to the "off-shore" point, where the tongue angles at 35°. The plan view also shows, on the other side, a thickening of the wall, when compared with the recessed wall, where the wall is met by the buttressed portion of the tongue. If this plan view is accurate, it is far from obvious that the Tyco tongues can be said to join the walls at an angle.
139 The accuracy of Mr Weir's plan view was not challenged. Instead, Mr Catterns pointed to answers given by Mr Weir in cross-examination which, so he argued, suggested that Mr Weir agreed that the Tyco tongues join the walls at an angle. Curiously enough, the passage to which Mr Catterns referred is one in which he put a quite different proposition to Mr Weir. The passage is as follows:
"MR CATTERNS: The base feature of the Tyco finger has a bit that projects from the wall in a plane perpendicular to the axis to a greater extent than your drawing [of the resiliently deformable flanges in the 110 Connector System]?---Well, does it? I am not sure about that, because the supporting wall in just the place where it is joined to the tongues in the Tyco product, is not a continuous line. It is a line that is offset at the bottom compared to at the top, so, it is not immediately clear where the starting point for the drawing the tongues projecting from the wall is. Secondly, the buttressing, I have regarded as a secondary subsidiary feature that has been added to the tongues. That sort (sic) of fill in the little region later after the base feature has been defined, so, it is difficult to say what happens to the Tyco tongues in this photograph.MR CATTERNS: I suggest to you that the Tyco tongue has, as part of its base feature, an element which projects from the side wall in a plane perpendicular to the axis in a way which looks like what we see on the whiteboard...?--- Well, that is not the way I would construct this base feature. I am happy to sketch...what I see to be the base feature of the Tyco product."
140 I do not read this passage as an acknowledgment by Mr Weir that the Tyco tongue joins the wall at an angle. Nor do I understand the sketch he subsequently prepared (Exhibit 5) as demonstrating that the tongue does join the wall in that manner. The exhibit was prepared for quite a different purpose, that is, to explain Mr Weir's concept of a "base feature". Whatever the significance of his evidence for the "base feature" hypothesis, I do not think it has the effect Mr Catterns sought to attribute to it.
141 Mr Catterns also relied on the evidence of Professor Samuel. In his affidavit, Professor Samuel observed that
"the Tyco Product has strain relief means whose resiliently deformable fingers are each at some angle to the walls of the rectangular housing at their points of attachment".
This evidence was given in the context of Professor Samuel expressing the view that the tongues of the Tyco connector cannot be said to lie in a single plane. Professor Samuel was not expressing the view that the Tyco tongues are joined to the walls at an angle taking into account the characteristics identified in Mr Weir's plan view. Nor was his attention drawn to these characteristics in cross-examination. I do not regard his oral evidence as carrying the matter any further.
142 On the rather unsatisfactory state of the evidence on this issue, I am not prepared to find that the Tyco tongue is connected to the wall at an angle in the sense that the angle of joinder necessarily creates an offset which, in turn, actively contributes to the deflection of the tongue in the required direction. The evidence shows that one side of the tongue is clearly connected to the wall at a right angle. The other side of the tongue does not join the recessed portion of the wall at an angle, although it appears to join the thickened portion of the wall at an angle. The witnesses were not asked to address the significance of these characteristics for the purposes of determining whether the Tyco connector infringes integer 10.
143 It must also be remembered that the requirement of integer 10 is that the tongues be joined to the walls of the passageway by means of affording deflection of the tongues in the required direction. The expression "affording", as I have explained, requires that the means of joinder must materially contribute to the deflection of the tongues towards the contact element. The evidence establishes that the Tyco tongues are joined to the walls by means of buttresses that inhibit flexure. Not only were the witnesses not asked about the angle of joinder of the Tyco tongues to the walls in the context of integer 10, but they were not asked about the precise contribution made by the angle of joinder (if any) to the deflection in the required direction. Having regard to Mr Hunter's evidence about how the Tyco connectors deflect in the required direction, I am essentially being asked to speculate about the contribution made by the angle of joinder to the required deflection of the tongues. In the absence of evidence directed to this point, I cannot conclude that the Tyco connector infringes integer 10 by reason of the angle of joinder of the tongues to the wall.
144 For much the same reasons as I have already given in relation to integer 6, I would not regard it as material to the question of infringement that Tyco (if it be the case) copied an embodiment of the claimed invention.
INTEGERS 2 AND 8
145 Since I have found that the Tyco connector does not possess integers 6 and 10 of the claimed invention, it is not necessary to address Tyco's contentions that its connector also lacked integers 2 and 8. I shall, however, deal briefly with each contention.
146 Tyco submitted that integer 2 was not present because the Tyco connector lacked "at least one transverse passageway". The submission relied on the evidence of Professor Frost. He said that the "cavity" or rectangular box-like structure housing the tongues and contact element was not part of a single "passageway". Rather, it was a separate element of the connector, which was approached by passageways from two opposite sides. Professor Frost pointed out that the walls of the cavity are set apart by a distance significantly greater than the width of what he described as the two passageways entering the cavity from opposite sides.
147 In my view, the word "passageway", when used in integer 2, means a passage formed in the moulding of the plastic body which is capable of accommodating the cable inserted from above. It is not to the point that the passage is of variable width. This construction is supported by the Macquarie Dictionary definition of "passageway" as a "way for passage". "Passage" itself is defined, relevantly, to mean
"that by which a person or thing passes; a means of passing; a way, route, avenue, channel etc".
It is also supported by the description and figures in the specification. The figures, for example, show that the tongues are formed in a recessed area which is nonetheless included in the description "passageway" used in the body of the specification.
148 If it were necessary to do so, I would find that integer 2 is present in the Tyco connector.
149 Tyco also submitted that its connector does not possess integer 8. This contention rested on the proposition that the expression "adjacent the open upper side of the passageway" in integer 8 requires the narrowest portion of the slot to be at the top of the passageway formed by the tongues. On this interpretation, the most narrow portion of the slot is some distance below, rather than adjacent to, the upper side of the passageway.
150 In my opinion, when integer 8 is read in context, it conveys a requirement that the narrowest portion of the slot be near the top, even if not precisely at the top. Figure 4, for example, shows a funnel like entrance portion to the slot, reflecting (in the words of claim 6) the practical need for a "wire accepting opening leading to [the] slot". On this construction, integer 8 is present in the Tyco connector.
CONCLUSIONS ON INFRINGEMENT
151 For the reasons I have given, I do not think that the Tyco connector infringes claim 1 in the Patent. Since claims 4, 6 and 8 are dependent on claim 1, Tyco has not infringed those claims. Nor has there been any infringement of claim 9, the omnibus claim. It is not necessary to address Tyco's submission that there are additional reasons, beyond those already considered, why the Tyco connector cannot be said to infringe claims 4, 6, 8 and 9.
THE QUESTION OF COPYING
152 3M submitted that I should infer from the evidence, including exhibits derived from documents produced by Tyco, that the Tyco connector was a copy of the 3M connector manufactured in accordance with the Patent. In view of what I have said, it is not necessary to make a finding on this issue for the purposes of the question of infringement, although it still may be relevant on the question of obviousness.
153 The evidence warrants an inference that Tyco copied some elements of the 3M connector, in particular those features identified by Dr Stark (see [88] above). That inference is supported by confidential evidence relating to the compatibility of the Tyco connector. But no allegation is made in these proceedings that Tyco breached any duty owed to 3M by copying elements of the 3M connector not the subject of the claimed invention. In any event, the copying of some aspects of the 3M connector does not demonstrate that Tyco copied the invention as claimed in the Patent.
154 In my opinion, there are simply too many significant differences between the products to warrant drawing an inference that Tyco (or a related company) copied an embodiment of the claimed invention as alleged by 3M. This is so notwithstanding that Tyco chose not to adduce evidence explaining how the Tyco connector came to be designed and developed. The significant differences between the Tyco connector and the 3M connector, for example, include the following:
* the connectors incorporate different approaches from an engineering design perspective (a "cantilever" versus "hinge" mechanism);
* the different design approaches are reflected in the different characteristics of each product, such as the use of the buttresses in the Tyco connector (which resist deflection of the tongues at or near the point of joinder to the walls) and the use of the flute in the 3M connector (which facilitates maximum deflection of the tongues at or near the point of joinder to the walls);
* the variations in the shape and orientation of the tongues; and
* the fact that the Tyco connector provides a superior grip on the conductor.
155 Mr Catterns frankly acknowledged in argument that the copying allegation was largely a "debating point with no conclusive ultimate value" on either the issue of infringement or obviousness. In any event, I think that the factual basis for the allegation is wanting.
OBVIOUSNESS
THE PRINCIPLES
156 The test of what was obvious and did not involve an inventive step, having regard to what was known or used in Australia at the priority date (1952 Act, s 100(1)(e)) is
"whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date. The question is not whether it was or would have been obvious to the inventor or to some other particular worker in the field."
Wellcome Foundation Ltd v VR Laboratories, at 270, per Aickin J; Aktiebolaget Hassle v Alphapharm, at 38,168, per curiam.
157 The hypothetical worker in the field 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 related": Sunbeam Corporation v Morphy-Richards (Australia) Pty Ltd [1961] HCA 39; (1961) 180 CLR 98, at 112, per Windeyer J. As Finkelstein J pointed out in Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 177 ALR 231, at 247:
"The skilled addressee, or the judge adopting the mantle of the skilled addressee, is relevant for a variety of purposes in patent law. He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious. The skilled addressee has been given various descriptions. Sometimes he is the `notional skilled addressee', sometimes the `uninventive skilled worker in the particular field', sometimes the `person skilled in the art', and sometimes the `non-inventive hypothetical skilled addressee'." [Citations omitted.]
158 In Catnic Components Ltd v Hill, Lord Diplock (at 242) observed that skilled addressees are "those likely to have a practical interest in the subject matter of [the] invention". They may also be trained engineers or other scientists or other highly qualified persons in research departments, reflecting the changes that have occurred in industry and technology: Allsop Inc v Bintang Ltd (1989) 15 IPR 686, at 700, per curiam.
159 The authorities recognise that there may be occasions upon which the person skilled in the art should be regarded as a composite being or team, since no single person will have the necessary range of knowledge to determine whether it is worthwhile to try a particular step or process: Coopers Animal Health Australia Ltd v Western Stock Distributors Ltd (1986) 67 ALR 390, at 410, per Wilcox J. As was said by Sachs LJ in The General Tire and Rubber Company v The Firestone Tyre and Rubber Company Ltd [1972] RPC 457, at 485:
"The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date. If the art is one having a highly developed technology, the notional skilled reader to whom the document is addressed may not be a single person but a team, whose combined skills would normally be employed in that art in interpreting and carrying into effect instructions such as those which are contained in the document to be construed."
See also Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 (Elconnex (No 1)), at 507, per Burchett J.
160 Whether or not an invention involves an inventive step is to be ascertained by reference to the state of common general knowledge in the relevant field at the priority date.
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253, at 293, per Aickin J; Graham Hart (1971) Pty Ltd v S W Hart & Co Pty Ltd [1977] HCA 5; (1978) 141 CLR 305, at 329, per Aickin J.
161 When lack of inventiveness is asserted the thing or process claimed as an invention is assumed to be a new thing, not previously disclosed to the public, but it is said not really to be an invention: Sunbeam Corporation v Morphy-Richards, at 111; Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR 171, at 181. Thus the fact that something has not been done before is not an answer to a plea of obviousness: Flexible Steel v Beltreco, at 366, per Hely J. It follows that, as Tyco pointed out, the fact that the invention claimed in the Patent was not known before the priority date does not necessarily supply "subject matter". It is not enough, for example, that the alleged invention is of an excellent design, if it is simply the application of a well-known and well-understood mechanism to achieve an obvious advantage: Acme Bedstead Co Ltd v Newlands Brothers Ltd [1937] HCA 63; (1937) 58 CLR 689, at 709, per Dixon J, applying Adelmann and Ham Boiler Corporation v Llanrwst Foundry Co (1928) 45 RPC 413, at 420 to a pawl and ratchet device for elevating a hospital bed.
162 While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228, at 249, per Aickin J; Winner v Anmar Holdings Pty Ltd (1993) 41 FCR 205, at 212, per Davies J at 225-226, per Cooper J. The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort: Winner v Ammar, at 226, per Cooper J.
163 As 3M pointed out, conceiving of an idea and giving it a practical embodiment can constitute an inventive step. In Sunbeam Corporation v Morphy-Richards, the claimed invention was an electric frying pan. Windyer J approached the question of inventiveness as follows (at 115):
"This is not a case of solving an old problem or satisfying a long felt want. It is rather a case of conceiving that an electric frying pan would be a useful article, envisaging the features it must have to make it practically useful, and by ingenuity in the combination of known devices producing a new and useful thing, a frying pan having the desired features."
See National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252, at 264, per curiam (pointing out the falsity lying in dividing up the inventive process).
164 The various formulations of the "quantum" of inventiveness required to establish that an invention involves an inventive step were addressed by Hely J in Flexible Steel v Beltreco, at 366-367:
"[T]he difference between the simple idea which really breaks new ground and an unimaginative extension of well known techniques into a closely similar area: Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 507, per Burchett J; whether the subject of the patent `was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end, or whether it required some invention to devise it': Vickers, Sons & Co Ltd v Siddell (1890) 15 App Cas 496 at 502; to the same effect, whether if one wished to achieve a particular result, the means of doing so were obvious to persons skilled in the trade: Acme Bedstead; whether there is some difficulty overcome, some barrier crossed: RD Werner & Co v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679, at 689 per Lockhart J; whether there is `such an addition to the stock of human knowledge as to entitle the patentee to a monopoly': Blakey & Co v Latham & Co (1889) 6 RPC 184, at 189 per Lopez LJ; whether the invention was `beyond the skill of the calling': Allsop Inc v Bintang Ltd at 701. Something will be obvious (and hence the patent invalid) if it would appear to anyone skilled in the art but lacking inventive capacity, that to try the step or process would be worthwhile to solve some recognised problem or meet some recognised need: Coopers Animal Health Australia Ltd v Western Stock Distributors Ltd (1986) 6 IPR 545, and the cases there cited."
165 As was pointed out by the Full Court in Aktiebolaget Hassle v Alphapharm Pty Ltd, at 38,168-38,169:
"[I]t is important to note exactly what is meant by "obvious" in this context. The law does not require that it be apparent, at the outset, to the non-inventive skilled worker, that a particular combination of integers will succeed in obtaining the desired result. It is enough that it be apparent to such a worker that it would be worthwhile to try each of the integers that was ultimately successfully used. The point was made in a classic statement of Buckley LJ in Beecham Group Limited's (Amoxycillin) Application [1980] RPC 261. At 290-291, his Lordship said (omitting citations):`It is clearly established that, for a particular step or process to be obvious for the purpose of either section, it is not necessary to establish that its success is clearly predictable. ... It will suffice if it is shown that it would appear to anyone skilled in the art but lacking in inventive capacity that to try the step or process would be worthwhile ... Worthwhile to what end? It must, in my opinion, be shown to be worth trying in order to solve some recognised problem or meet some recognised need. The uninventive expert ... should not be supposed to be attempting to discover something new, that is, to be striving for inventiveness. Having been shown what was disclosed by the prior art, he must be supposed to be attempting to solve some problem or fulfil some need which has not been resolved or satisfied by the prior art but which appears to his uninventive mind to be possibly capable of solution or satisfaction by taking the step or doing the thing under consideration. This, it seems to me, must involve the uninventive but skilled man having a particular problem or need in mind. If on carrying out his test he finds that the new step has the sort of consequence he had hoped but in an unexpectedly high degree, this would or might not mean that the new step was inventive or other than obvious; it might merely mean that a new obvious step has solved the problem or met the need unexpectedly well. The question would, I think, be one of degree. If, on the other hand, the new step produces some unexpected result productive of an improvement or benefit of an unexpected kind it may well be held to be inventive, the association of the new step with its result not having been obvious'." [Emphasis added]
166 A combination patent, whether constituted by integers each one of which is old, or by integers some of which are new, may be patentable if the combination produces a new result or product: Minnesota Mining v Beiersdorf, at 266, per Aickin J. If the claimed combination is "simply the application of well known and well understood things to an analogous use", it will not amount to a new result or product: Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173 (Elconnex (No 2)), at 180, per Lockhart J, citing Morgan & Co v Windover & Co (1890) 7 RPC 131, at 134, per Lord Halsbury; see also Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels plc (1993) 26 IPR 565, at 568-569, per curiam. Where questions of inventiveness arise in respect of a combination patent, it is the inventiveness of the combination as a whole that must be examined; inventiveness is not to be determined by a "piecemeal examination integer by integer": Elconnex (No 2), at 184, per Lockhart J.
167 The authorities warn against the misuse of hindsight, particularly in relation to combination patents. In Minnesota Mining v Beiersdorf, Aickin J said (at 293):
"When once an idea or an object or a process or a combination, admittedly novel, has been published, it is very easy to say after perhaps months of search and study in the Patent Office and the public libraries that the integers into which the patent might be dissected could be found scattered amongst the prior documents by a person who already knew the solution to the problem and therefore knew what to look for and what to discard. But that process does not demonstrate lack of an inventive step. The opening of a safe is easy when the combination has been already provided."
Similarly, Sheppard J observed in Elconnex (No 2), at 193-194:
"Questions of obviousness are frequently difficult because it is very easy to fall into the trap of using hindsight. Once an innovation which is useful comes on to the market, there is an inclination not only for lawyers but also for those in the relevant industry to treat it as the norm and as something which might have been easily thought of by any reasonably competent worker in the industry."
THE SKILLED WORKER
168 The first question is to determine the characteristics of the hypothetical non-inventive but skilled worker. Mr Yates submitted that the relevant field was the design and manufacture of electrical connectors. A skilled worker would have the combined knowledge of a "team" likely to be called upon to design and manufacture an electrical connector. This team would be represented by:
* a person experienced in telecommunications engineering, including the mechanical and electrical performance of products used in the telecommunications industry;
* a person with knowledge of and experience in mechanical engineering principles relating to metal and plastic components, including the performance and testing of plastic materials;
* a person skilled in the design and development of plastics, including injection moulded components; and
* an electrical engineer or electronic design engineer.
169 Mr Yates pointed out that Mr Seidel's "team" included a design engineer, a development engineer with expertise in the mechanical and electrical performance of products used in the telecommunications industry and a design engineer with expertise in performance testing of plastic products. There was also evidence from Mr Hunter, himself a mechanical engineer with extensive experience in the design of injection moulded plastic products, that both before and after 1989 the development of a product like an electrical connector usually involved the combined efforts of a design team with a range of different skills.
170 3M's position on this issue changed markedly between its final written submissions and Mr Catterns' oral submissions. The written submissions identified the relevant skilled addressee or worker as a non-inventive worker who was a user of connectors, rather than a designer. Indeed, it was submitted that the worker preferably would be a person with expertise in the external plant area of Telstra. Mr Douglas, of course, was such a person.
171 In his oral submissions, Mr Catterns accepted that the position put in 3M's written submissions was "oversimple". As I understood him, he did not dispute that the "team" approach put forward by Tyco was appropriate, but that it should be expanded to include an expert in the construction, functioning and use of electrical connectors in the Australian telecommunications industry. Mr Catterns contended that such a person might be required in order to come up with the idea of a different and superior connector. His submission accommodated a person such as Mr Douglas.
172 Mr Yates resisted the contention that the team constituting the notional skilled addressee should include an expert of the kind identified by Mr Catterns. I think, however, the "team" should be regarded as including such a person even though he or she would be unlikely to possess any significant design experience. The perspective of an experienced user of electrical connectors could be useful in identifying issues to be addressed in the design of electrical connectors, although the design input would come from other members of the team. This approach is consistent with the views expressed by Mr Georgevits and, for that matter, Mr Douglas himself. I think it appropriate to regard the notional skilled addressee as the team identified by Mr Yates but one which also includes a worker experienced in the use of electrical connectors in the telecommunications industry.
THE INVENTIVE STEPS
173 It was common ground that Tyco bore the onus of proof on the question of obviousness. Nonetheless, it is helpful to identify the inventive steps in the claimed invention relied on by 3M. These were in substance the following:
* first, the conception of the idea that it would be advantageous to combine the features of superior strain relief and wire retention in a single feature within a modular connector or a connector capable of being a modular connector; and
* secondly, the combination of integers employed to implement the idea.
SOME EVIDENTIARY ISSUES
174 The task of determining whether a claimed invention was obvious is inherently difficult, if only because of the pitfalls of having to place oneself in the position of a hypothetical skilled addressee at the priority date. Those pitfalls include the danger of misusing hindsight to which the authorities refer.
175 The difficulties in the present case have been compounded by changes in Tyco's position and the nature of the evidence adduced by the parties. Tyco's amended particulars of invalidity relied on a large number of patents published at the Patents Office, Canberra (some of which were referred to in the body of the Patent itself) and a large number of other documents said to have been published in Australia before the priority date. Tyco did not pursue this aspect of its obviousness case.
176 The case ultimately pressed by Tyco was that the combination of integers reflected in the Patent represented merely a logical and routine choice of design elements from other design choices available. Tyco pointed to concepts and features that were well known to engineers and designers of products before the priority date, such as the fact that a slot could provide both strain relief and wire retention for electrical connectors. Mr Yates submitted that the Patent essentially constituted the application of well known and well understood concepts and mechanisms to an analogous use.
177 The evidence adduced by Tyco had the advantage that its experts comprised members of the team that I have found would constitute the hypothetical skilled worker. It had the disadvantage that substantial portions of their affidavits were either rejected or not read. Consequently, it is not always easy to determine whether a particular opinion was based wholly on material that had been admitted into evidence.
178 A further difficulty is that, on some occasions, Tyco's experts were asked to address questions that were framed in general terms and not specifically directed to the criteria that must be used to determine whether a claimed invention was obvious. Mr Weir, for example, was asked to
"describe what was known in Australia about electrical connectors before the Priority Date and, in particular, about the methods used to hold wires in place in a connector".
I do not agree with 3M's submission that anything said by Mr Weir on the topic of obviousness should simply be disregarded as based on a "false premise". I agree, however, that care must be taken to ensure that any opinion expressed by Tyco's witnesses was directed to a relevant issue and informed by appropriate criteria.
179 3M's expert evidence on obviousness was confined to that of Mr Douglas, with some limited additional evidence being given by Dr Stark. As I have explained, Mr Douglas' experience was confined to one area of Telstra's operations (see [13], [29] above). Once it is accepted, as I have found, that the notional skilled addressee comprised a team of persons with a range of skills, the difficulty confronting 3M in relying heavily on Mr Douglas' evidence on the question of obviousness becomes apparent. In my view, his evidence on that question was not especially helpful. In particular, while Mr Douglas could say what his own responses might have been to the perceived need to develop more effective means of wire retention and strain relief in electrical connectors, he could not address meaningfully the approach likely to be taken by a team to the design of an improved product.
COMMON GENERAL KNOWLEDGE
The Extent of Common General Knowledge
180 It was common ground that the common general knowledge of the skilled worker included an understanding of the following areas (each of which has been taken from the amended particulars of invalidity):
* Electrical connectors for use in terminating wires and cables in a range of electrical fields including telecommunications.
* Electrical connectors made from a range of materials including moulded plastic.
* Electrical connectors for insulated conductors (wires) which included insulation-penetrating cutting terminals (such connectors being commonly referred to as insulation displacement connectors or IDCs) whereby insulation surrounding a cable (wire) is penetrated automatically and displaced, and electrical contact made between the cable (wire) and a contact element."
It had been known to the notional skilled worker prior to 1989 that both strain relief and wire retention could be provided by a slot. IDC's had become well established in Telecom's telecommunications network by 1986, well before the priority date. The slot in an electrical contact within an IDC provided resistance to longitudinal forces, although Mr Yates accepted that this could not properly be described as strain relief. More importantly, connectors used in Telecom's external plant employed separate slots, the function of which was to provide strain relief when electrical contact was made by IDC's. In the case of the Mini Picabond Connector, for example, the slots were U-shaped, in the sense that they had parallel sides and a rounded bottom. Mr Douglas gave this evidence:
"These outer slots in these connectors, and I am talking about the parallel sides, not only provided strain relief but also a means of wire retention, didn't they?---Yes.The width of the slot is smaller than the range of diameters of insulated conductors that are intended to be used in them?---Yes.
So that the sides of the slot provide a compressive force on the insulation of the conductor?---Yes.
The edges of the slot hold the insulation of the conductor by lateral compression?---Yes.
And by `lateral compression' we mean that the sides of the slot are pressing in on the insulation of the wire?---Yes.
To grip it firmly?---Yes."
181 The Mini Picabond Connector connected two conductors, while connectors which could connect up to four conductors were known as Standard Picabond Connectors. Each connector came in three versions designed to connect conductors within defined but overlapping diameter ranges.
182 Well before the priority date, moulded plastics were used to construct flexible retaining elements. These took the form of a "snap fit" assembly involving the use of flexible plastic fingers to deform and snap back to retain a part in a snap fit assembly. Once snap fit fingers revert to their original shape, they exert force on the components being held together. As Dr Stark pointed out, however, and Mr Hunter acknowledged, the snap back technique is different from that employed in the claimed invention.
183 Mr Hunter also gave evidence that the use of flexible retaining elements to retain a tubular component was known before 1989. He gave the example of the "Tinnerman" clip which has been in use in Australia since 1923. It employs flexible retaining elements oriented to move in one direction and lock a plastic tubular component so that the component cannot be pulled back. The Tinnerman clip uses two flexible retaining fingers to grip onto a cylindrical plastic object in a one way manner. As the cylindrical object pushes through the fastener, the flexible retaining elements move forward and bite into the cylindrical plastic object. The Tinnerman clip can be routinely applied to accommodate items of varying diameters within chosen ranges.
184 There was some disagreement between Dr Stark and Mr Hunter as to the properties of the Tinnerman clip. I prefer Mr Hunter's more detailed evidence. Mr Hunter said that the clip may be made of any elastic material, not just spring steel, including thermoplastic material. It is not necessary for the clip to cut into the element to resist the application of axial withdrawal force; whether it does or not is a design choice. Moreover, prior to 1989, Tinnerman clips had been used to produce a permanent or removable assembly (such as the door trim on motor vehicles). The Tinnerman clip is, however, different from the claimed invention in that the component is inserted through the centre of the clip and not from above.
185 By 1989, the injection moulding process for making plastic articles was well established in Australia. Injection moulding is a manufacturing method in which molten plastic material is injected into a mould or die under high pressure to form the shape of the object to be manufactured. It can be used to manufacture a large range of objects, but is particularly useful where high precision is involved and where the designer is seeking to employ a multitude of functions within a single object. Manufacturing by injection moulding using thermoplastic material is particularly advantageous in this regard because the moulded object can incorporate many integral features within the design, thereby obviating the need for a separate component, such as a spring or a fastener. For example, if the injection moulded object is to be part of an assembly, it can be made with integral flexible projections to fasten or retain a related object in the assembly. By way of a further example, a container and lid, rather than being made as two separate components, can be manufactured as a single object by incorporating an integral hinge in the design. These advantages were appreciated, and realised by injection moulding using thermoplastic materials, well before 1989.
186 Both before and after 1989, designers often faced the challenge, when developing means to fasten or retain two or more components, of dealing with the wide range of tolerance that may be inherent in one or more of those components. As Mr Hunter said, where this is the case, the fastening or retaining means must be `compliant'; that is, it must be able to adapt itself to mate with the component that may have been produced at either the minimum or maximum end of its manufacturing tolerance band. One of the key advantages of injection moulding is that flexible retaining elements, which are compliant, may be designed into an object as an integral feature. Before 1989, injection moulding was routinely used where the elements were smaller than the flexible retaining elements contemplated in the Patent.
187 Mr Hunter also gave this evidence, which I accept:
"As at April 1989 a person experienced in the design of injected moulded plastic products did not have to resort to a document to know that flexible arms, fingers, projections or tongues could be incorporated as an integral feature of an injection moulded object to retain an item to be placed in that object or to be mated with it in an assembly. This was a matter of ordinary knowledge by those experienced in mechanical engineering as applied to the design of products. The operation of flexible elements to join, secure or hold objects were known to be based on simple physical and geometric principles. The injection moulding of plastic materials allowed these principles to be readily put into practice."
188 As Dr Stark accepted, it was well known to engineers prior to 1989 that flexible fingers or projections could be used to provide a locking or gripping function and that such features could be integrally formed in objects made from plastics, including injection moulding. The principles by which such elements flexed or deformed in response to forces were well known both to engineers and designers of plastic products in Australia. Designers of plastic products would also have been familiar with the literature published by companies dealing in plastics which set out guidelines relating to the manufacture of flexible or resilient features. Moreover, the use of flutes (or, as Dr Stark preferred, "localised thinning") so as to produce a hinging mechanism was familiar as a design concept in 1989. Dr Stark also accepted that the concept of a self-locking or self-energising action, whereby tongues tightened when pulled, was well understood and appreciated by engineers and designers in Australia before 1989. So, too, the effect of an offset on the direction in which flexible elements deform was well understood.
189 There was a dispute as to whether the 3M² modular connector formed part of the common general knowledge in Australia in 1989 and whether modular connectors in general were known. Mr Douglas, for example, said that the 3M² modular connector was not commonly used or widely known in the Australian telecommunications network in 1989. Yet Mr Lyneham gave evidence, which I accept, that the 3M² connector had been readily available in Australia since 1968. Mr Lyneham's evidence was challenged in cross-examination, but was supported by a 1973 article in The Telecommunications Journal of Australia which discussed the 3M² connector. That journal was widely read by telecommunications field technicians. I also accept Mr Lyneham's evidence that the Krone 10-pair connecting module (the "Krone module") had been adopted by Telecom Australia in 1980 as its standard system for cabling. I infer from that and other evidence that it formed part of the common general knowledge available to the non-inventive skilled addressee.
190 The Krone module is a modular, mass terminating system which allows up to 40 wires (ten pairs in and ten pairs out) to be connected. The range of conductors that can be connected extends from 0.4 mm to 0.65 mm (that is, it can handle conductors of varying diameters). It has wire retention detents that project laterally from the side walls of the passageway into which the conductors are placed. Flanges project from the opposite walls and form a parallel-sided slot. These retaining elements perform both wire retention and strain relief functions after connection, although the flanges are not the only means of performing such functions. The flanges are not flexible but comprise rigid plastic edges (a description advanced by Mr Douglas and accepted by Mr Weir). The strain relief occurs because the plastic edges bite into and deform the insulation around the conductor.
191 Brief reference was made in argument to the Panduit 10-wire connector, which incorporated what Mr Weir described as downwards-angled barbs, which are symmetrically opposed and provide the accepting passageway for each wire. Mr Douglas could not recall having seen connectors incorporating downward facing barbs prior to 1989. Mr Weir gave unchallenged evidence that the Panduit connector product had been advertised in 1980 and that a similar Panduit MAS-CON 12-wire connector had been used in a dot matrix printer in 1985 or 1986. I think it likely that a non-inventive but skilled team, with an interest in the design of connectors, would have known in 1989 of the Panduit connector and of its use of downward facing barbs. I did not understand Mr Catterns to argue against this conclusion.
192 Mr Weir said that the barbs in the Panduit connectors provided a retaining means against outward movement of the wire and "some degree of strain relief for suitably sized wires". Mr Douglas disagreed with this opinion on the ground that the barbs faced the wrong way to provide strain relief. He also said that for a conductor to make contact with the barbs it would have to be so large as to be unable to fit into the contact element. Neither Mr Weir nor Mr Douglas was cross-examined on this issue. Without further elucidation I am not satisfied that Mr Douglas' opinion was incorrect.
The AT&T 110 Connector
193 There was also a dispute as to whether a connector known as the AT&T 110 connector formed part of common general knowledge at the priority date. The AT&T 110 connector was developed by AT&T's research arm, Bell Telephone Laboratory. Mr Yates maintained that Tyco could make out its case on obviousness without reference to the AT&T 110 connector, but contended that the case became even stronger if the connector formed part of common general knowledge.
194 Mr Weir was familiar with the AT&T 110 connector and had examined it under magnification. In his affidavit, he said that the 110 connector system
"is designed to accommodate a multitude of insulated wires by means of wire restraining clamps which provide wire retention and strain relief. Each wire-restraining clamp consists of a set of four resiliently deformable flanges, arranged in two opposed pairs such that an inserted wire is gripped laterally at two distinct locations along its length (one for each pair of flanges)."
195 Mr Weir identified the features of the AT&T 110 connector that it had in common with the claimed invention. These were the following:
"(a) an integrally formed basic body made of injection moulded plastic;(b) a plurality of wire-restraining clamps, each consisting of a set of four resiliently deformable flanges arranged in two opposed pairs;
(c) a wire-receiving slot between each pair of resiliently deformable flanges;
(d) wire-receiving passageway lying between the two wire-receiving slots in each wire-restraining clamp, defining an axis;
(e) strain-relief flanges project from the side walls, in a plane perpendicular to the axis;
(f) metal blades for establishing electrical contact by insulation displacement are disposed in the passageway in a vertical plane, perpendicular to the wire axis;
(g) wire retention and strain-relief are both provided by the resiliently deformable flanges;
(h) "scallops" are provided in the free ends of the resiliently deformable flanges, on the inner edges of those flanges, in order to facilitate wire-retention."
Of course, these features do not make the AT&T 110 connector identical to the claimed invention. For example, the slot in the AT&T 110 connector is essentially straight and parallel-sided. There are two opposed pairs of resiliently deformable flanges acting as wire restraining clamps, rather than a single pair. Furthermore, the AT&T 110 connector includes a connecting block which contains contact elements and is attached to the wiring block.
196 In cross-examination, Mr Weir qualified his affidavit evidence. He agreed that the strain relief flanges do not project from the walls in a plane perpendicular to the axis, in the same sense as used in claim 1 of the Patent. He also agreed that the connecting block ensures vertical retention of the cable, once the block is attached. Further, the connecting block contributes to the resistance to any axial forces placed on the conductor. Nonetheless, Mr Weir stated that the deformable flanges contribute significantly to the resistance to axial forces. Taking account of these qualifications, I accept Mr Weir's evidence. To the extent that Mr Weir's analysis conflicts with that of Mr Douglas on this issue, I prefer Mr Weir's evidence.
197 I should add that Mr Weir's evidence in relation to the AT&T 110 connector was consistent with that of Mr Georgevits, subject to one exception. Mr Georgevits had said in his affidavit in reply on invalidity that the tongues of the AT&T 110 connector were not joined to the wall by means for affording deflection (and therefore the AT&T 110 connector was different in that respect from the Patent). In cross-examination, based on a visual inspection of the connector, he said that he had been mistaken and that the tongues appeared to narrow at the wall, so that the joinder provided a means for deflection of the tongues. Mr Weir, however, had made a sketch of the AT&T 110 connector and his unchallenged evidence was that he was very familiar with the AT&T 110 connector system. In the witness box, Mr Georgevits found it difficult to tell whether there were any differences in design between the AT&T 110 connector inspected by Mr Weir (which was said by Mr Freestone, an electrical engineer, to be identical to one he had seen in 1987) and the one he (Mr Georgevits) had exhibited to his affidavit. Mr Douglas had compared the two connectors but did not identify in his affidavit any differences in the means by which they were joined to the wall. In these circumstances, I prefer Mr Weir's view, reflected in his sketch, that the tongues of the AT&T 110 connector did not narrow at the point of joinder to the walls.
198 The affidavit evidence initially read on behalf of Tyco did not establish that the AT&T 110 connector was available in Australia before the priority date. I permitted Tyco to read an affidavit by Mr Freestone relatively late in the hearing. I did so after giving 3M an opportunity to make inquiries concerning Mr Freestone's proposed evidence. 3M made diligent inquiries, but did not seek to cross-examine Mr Freestone or to adduce evidence at odds with his. Nor did it seek an adjournment to take its inquiries further.
199 Mr Freestone attended the annual meeting of the Australian Telecommunications Users Group in Sydney in 1987. This was the major cabling and trade show for those working in the telecommunications and data communications industry. At that time, new cabling standards were being developed for commercial building cabling, and there was considerable interest in cabling systems on the market.
200 Mr Freestone estimated that 600 to 1000 people attended the meeting on each of the three days it was held. The AT&T 110 connector was prominently displayed on a stand organised by AT&T and Honeywell. The stand was well attended. Mr Freestone was able to identify the AT&T connector exhibited to Mr Georgevits' affidavit as identical to the one he had seen at the meeting (although the particular connector exhibited to Mr Georgevits' affidavit was apparently manufactured in 1992).
201 Mr Freestone also gave evidence that from late 1987 MOD-TAP System Corporation ("MOD-TAP") had begun to manufacture products that would enable its system to interface and be compatible with other products. MOD-TAP was purchasing the AT&T 110 connector from AT&T in the United States, and incorporating the IDC unit into a base it manufactured as part of its system.
202 Mr Ward, formerly a Project Manager for the Commonwealth Bank of Australia, gave evidence that he became aware in 1988 that Honeywell Pty Ltd was using the AT&T 110 connector as part of its Premises Distribution System ("PDS"). He was given a demonstration at that time of how the PDS worked. Mr Ward incorporated the PDS system, including the AT&T 110 connector, into a draft plan for the Commonwealth Bank's Burwood Computer Centre. It was installed there before the end of 1988.
203 In my opinion, this evidence supports an inference that the AT&T 110 connector formed part of the background knowledge and experience available to all in the relevant field considering the making of new electrical connectors or the making of improvements to old electrical connectors: cf Elconnex (No 1), at 509, per Burchett J. I think that inference is reinforced by the composition of the hypothetical skilled worker in this case. It is further reinforced by evidence that the AT&T 110 connector was widely known shortly after the priority date. It is a fair inference that the promotional activities of Honeywell Pty Ltd before the priority date were by no means insignificant. Having regard to Mr Douglas' limited experience, I do not regard the fact that he could not recall seeing the AT&T 110 connector prior to 1989 as being of significant weight on this issue.
THE IDEA OF COMBINING WIRE RETENTION AND STRAIN RELIEF AS A SINGLE FEATURE
204 In his final oral submissions, Mr Catterns placed considerable emphasis on the inventiveness of the idea of combining the features of superior strain relief and wire retention as a single feature within a connector. Mr Catterns accepted that there was no direct evidence that such an idea should be characterised as inventive having regard to the common general knowledge in Australia. Neither Dr Stark nor Mr Douglas, for example, addressed this question.
205 Mr Catterns relied in part on the failure (as he argued) of Tyco, as the party bearing the onus of proof, to demonstrate that the notional skilled worker would or could have come up with the idea. He further submitted that, in any event, it is a matter of inference from the evidence that the idea was inventive. He contended that the commercial imperative that motivated 3M to set in motion the work undertaken by Mr Seidel and his team had not been shown to exist in Australia. Moreover, so he argued, modular connectors were not well-known in this country.
206 If there were no evidence on the question of the inventiveness of the idea, Tyco would have failed to have discharged its onus. But the evidence, although perhaps somewhat sparse on this issue, was not quite as bare as Mr Catterns suggested.
207 As I followed Mr Catterns' submissions, he contended that a skilled worker in Australia before the priority date would not have been prompted to seek additional means for retaining conductors against both vertical and axial forces. I think this submission tended to overlook the evidence given, for example, by Mr Douglas, that the need for effective strain relief was a constant problem that had to be addressed by all users of conductors, and that that need was fulfilled in a variety of ways before 1989. Mr Lyneham expressed a different view but the scope of his experience in relation to this question was limited. It is not as though the need for improved forms of strain relief was not acknowledged or understood in Australia.
208 Moreover, in my view, Mr Catterns' submissions require Australia to be regarded as more of a technological backwater in 1989 than the evidence suggested. Dr Stark suggested that in 1989 and earlier the general standard of engineering education in Australia was of a high quality and was comparable to that in the United States. Mr Seidel said that the ITU trade show held in 1987 (that provided the impetus for the invention claimed in the Patent) was the largest trade show of its kind in the world, attended by all of the largest corporations and governmental authorities working in the telecommunications field. There is no reason to think that representatives from Telecom, and others from the Australian telecommunications industry, did not attend the ITU Trade Show. No evidence was led to negate the obvious inference from Mr Seidel's evidence. It is difficult to accept that the uninventive but skilled worker in Australia would not have appreciated that an increase in the use of computers and the volume of data transmission would create greater demands on telecommunications distribution networks. Similarly, it is difficult to believe that the skilled addressee would not have thought that these developments were likely to generate greater use of larger wire gauges in order to facilitate faster transmission of data and a need for smaller wire counts. The evidence showed that larger wire gauges were in use in Australia before 1989.
209 Mr Catterns' submissions also tended to overlook the evidence relating to the Krone module. The evidence established, in my opinion, that this module included flanges that performed both wire retention and strain relief functions, albeit not exclusively. The flanges were not flexible in the sense described in the Patent, since they comprised rigid plastic edges, but they performed both functions in the one module.
210 Mr Hunter's evidence was helpful on this point. He pointed out that the typical design of the U-shaped contact element in an IDC connector of itself provided some resistance to longitudinal forces applied to a conductor, as well as operating as a retaining means for the conductor (although Mr Yates accepted that the resistance could not properly be described as strain relief). He went on to consider what would occur if one wished to provide additional means for holding the conductor in place and for resisting the forces that might then be applied to the conductor. He said that a number of different means could be considered. If, however, size was a constraining factor (for example, if one were concerned to arrive at a modular product of approximately the same size and dimensions as an existing product), this would tend to militate against the use of additional componentry to provide the additional means of resisting vertical and axial forces. Moreover, the design principle that the number of components in an assembly should be minimised, would favour the use of an integrally moulded feature which could be incorporated at almost zero incremental cost. Since in an IDC the conductor is loaded into the connector from above, it was logical that an integrally formed retaining element should be in the vertical plane so it could be loaded in the same way. Commonsense dictated that, if it were desired to improve the capacity of the slot to resist axial forces applied to the conductor, the sides of the slot would have to flex in a direction which resulted in resistance to the force. A method where co-planar resilient tongues or fingers hinge was merely one well-known way of achieving the required flexure.
211 Mr Hunter was cross-examined as to whether his views were influenced by the tasks he was asked to perform in preparing his affidavit. His response was that his views would have been the same independently of the task he was asked to perform. I accept his evidence.
212 The question of whether the development of an idea can be regarded as inventive is particularly difficult, especially when little of the evidence has been directed specifically to this question. The need to guard against ex post facto reasoning is particularly acute in relation to an issue of this kind. It is also necessary to bear in mind the small degree of inventiveness that is required. Nonetheless, I infer from Mr Hunter's evidence that if a team comprising the skilled persons I have identified were concerned to provide additional means for retaining conductors against both vertical and axial forces, then the idea of combining strain relief and wire retention as a single feature within a module was one that would simply be a logical product of known engineering and design principles. The process might involve some thought (it took Mr Seidel some five hours to come up with the idea) and it would be necessary to consider a number of different approaches. Some of these are exemplified in products forming part of the common general knowledge in 1989. I have referred to the Krone ten-pair module. Other examples include the outer V-shaped slots in the Mini Picabond connector and the resiliently deformable flanges in the AT&T 110 connector.
213 It seems to me that all of these factors created an environment where the skilled worker would have appreciated the need for improved strain relief and wire retention. The skilled worker would have appreciated that there were a number of possible approaches to the problem. The choice of combining strain relief and wire retention in a single feature in a modular connector was one of the choices which would have been apparent, albeit after some inquiry and consideration, to a non-inventive skilled addressee comprising a team of the kind I have identified.
214 Mr Catterns relied on evidence given by Mr Weir, to the effect that the use of a tapered slot might, to some extent, reduce the effectiveness of the slot in performing strain relief functions because of the need to force the wire through the narrow opening of the slot. But that possible design difficulty does not, in my view, produce the result that the idea of combining strain relief and wire retention involved an inventive step. Mr Weir rejected the suggestion that the intuitive response to the difficulty would have been to provide two separate mechanisms for strain relief and wire retention. Combining the two functions in a single mechanism, in my view, was an idea that an uninventive but skilled worker would have appreciated was well worth trying.
215 It follows that notwithstanding the generous approach to the concept of an inventive step established by the authorities, the idea of combining wire retention and strain relief as a single feature did not involve an inventive step in the relevant sense. It was merely a choice among a number of options that would have been apparent to the notional skilled worker concerned to seek additional means for retaining conductors against both vertical and axial forces.
THE COMBINATION OF INTEGERS
216 Mr Yates first submitted that, independently of any consideration of the AT&T 110 connector, the combination embodied in the Patent would have been obvious to the notional non-inventive skilled addressee having the characteristics that I have identified. (Mr Yates took this approach in case a finding was made, against his contention, that the AT&T 110 connector did not form part of common general knowledge in 1989.) Mr Yates characterised the critical features of the combination as the use of flexible retaining elements within a module connector, where the elements form a slot to retain an insulated conductor against outward movement, whether the force be radial or axial, and where the elements deflect towards the contact element on insertion of the conductor.
217 The starting point is that each of the components of the combination formed part of common general knowledge prior to 1989. In particular, it was known that:
* multi-pair electrical connectors were in use;
* multi-pair connectors could be used to accommodate conductors of different diameters;
* both strain relief and wire retention could be provided by a slot;
* moulded plastics could be used to construct flexible retaining elements, including those operating by a hinge mechanism;
* flexible retaining elements could be used to retain tubular items;
* flexible retaining elements could be designed as an integral feature of a small object such as a connector; and
* flexible retaining elements could be used to provide a locking or gripping function on objects.
218 The question is whether the combination of integers in the Patent involved an inventive step. Tyco's position that it did not was supported by the evidence of Mr Hunter. As I have noted, Mr Hunter, unlike Mr Douglas and Dr Stark, approached the question from the perspective of a design team. I have already referred to Mr Hunter's evidence bearing on the inventiveness of the idea of combining strain relief and wire retention in a single feature (see [210]-[211] above).
219 Mr Hunter expressed the view that, given that a design team had been asked to implement such an idea, it was logical to employ integrally formed retaining elements in the same plane in which the contact slot is located. He also said that the use of a slot which narrows towards the top in order to impede vertical movement of the wire conductor was a common design practice before 1989. Mr Hunter's affidavit continued as follows:
"The slot may itself provide some, but perhaps insufficient, resistance to force applied to the conductor in the axial direction away from the point of contact between the conductor and the contact element. If one wished to improve on this then, to a designer, common sense would suggest that the sides of the slot should flex in a direction which results in resistance to such a force. Such flexing can only really be in a way where the flexure occurs in a direction towards the IDC contact when the wire is inserted. If the flexure were in the opposite direction then this would not resist the conductor pulling away from the contact element and would defeat the object for which the flexure is sought....[T]here are well known ways of achieving such flexure. The Patent describes a method where co-planar resilient fingers hinge. This is brought about by deliberate design choice. On the other hand, the Tyco product brings about flexure through the use of resilient fingers which are not co-planar and which have a cantilever action. This is an alternative and deliberate design choice.
Each of these design choices...were in 1989 logical and routine choices for a designer having regard to the object to be achieved (ie, given size constraints, and the desire to provide additional means of resistance to forces which might operate on the conductor in the vertical direction, and in the axial direction, to disrupt the electrical contact). The need for the connector to accommodate conductors of varying diameters is simply a question of using compliant fingers."
220 Mr Hunter's opinion is, of course, not determinative of the issue to be resolved. It is necessary to take account of the possibility that Mr Hunter, in referring to "logical and routine" choices for a designer, may not have a precise understanding of the legal criteria to be applied. It is also necessary to guard against the dangers of hindsight.
221 Nonetheless, I think that Mr Hunter's opinion, when considered in the context of all the evidence, supports the proposition that it would have been apparent to the non-inventive skilled worker (comprising the team I have identified) that it was worthwhile to try the combination of the integers ultimately embodied in claim 1 of the Patent (see Aktiebologet Hassle v Alphapharm [165] above). I do not think that the cross-examination of Mr Hunter casts doubt on his analysis, notwithstanding that he had access to material that did not form part of common general knowledge in 1989. Mr Hunter also dealt satisfactorily, in my opinion, with criticisms made by Dr Stark of his reasoning in relation to the Tinnerman clip as an example of the use of flexible fingers as retaining elements. Moreover, Mr Hunter fell squarely within the notional team, notwithstanding that his own experience with electrical connectors was relatively limited. As I have already noted, much of the criticism directed at Mr Hunter's evidence was heavily influenced by the contention, ultimately abandoned by 3M, that the non-inventive skilled worker should be seen as a user of connectors rather than as a team including a person skilled in the design and development of plastics.
222 Mr Hunter's evidence was consistent with the findings I have made as to the nature and extent of common general knowledge before the priority date. In particular, the use of a slot in a connector to provide strain relief and wire retention was, as Mr Yates submitted, an old combination. Mr Hunter's view that it was a purely routine step for the design team to consider creating the slot by using flexible retaining elements which deform in the direction of the contact element seems to me to be consistent with the knowledge and experience that would be attributed to the members of the team, especially those skilled in the design and development of plastics and injection moulded components.
223 The tapering of the slot was an obvious measure to improve wire retention, even though it may have presented some routine design problems in ensuring that the single feature was effective in providing both wire retention and strain relief.
224 I do not think that Professor Samuel's evidence, of itself, would have warranted the conclusion that the combination embodied in the Patent required no inventive ingenuity, even of a small order. Professor Samuel, perhaps too readily, characterised as self-evident the use of a "toggle action clamping means" in an electrical connector. (Professor Samuel used that expression to refer to the technique by which the relative movement of two bodies is restricted by the incorporation of a suitable diagonal element which exploits (primarily) frictional forces.) There is some force in Mr Catterns' submission that Professor Samuel's high qualifications and ingenuity may have led him to overstate the extent to which basic principles can yield solutions in particular contexts. Nonetheless, his evidence provides some support for Mr Hunter's more down to earth approach.
225 I have not found Mr Douglas' evidence on the obviousness issue to be particularly helpful. That is largely because his perspective was very much narrower than that of the non-inventive skilled worker constituted by a design team. Moreover, in his affidavit evidence Mr Douglas expressed the view that the Patent was "an elegant solution to the problems posed [in the specifications]". When asked in cross-examination what he understood by the word elegant, he replied:
"Simple, effective and efficient."
As Mr Yates submitted, this response does not suggest that the "solution" embodied in the claims provided inventive subject matter.
226 As I have noted, Dr Stark gave only limited evidence on the question of obviousness. I consider that Mr Hunter adequately answered Dr Stark's criticisms of his (Mr Hunter's) reasoning. Dr Stark also gave evidence that if he had been asked in 1989 to provide strain relief to prevent withdrawal of an insulated conductor he would have considered using a cap in combination with the body of the connector to clamp the conductor. He thought it "unlikely" that he would have used or employed the solution in the Patent, in particular the use of flexible retaining elements, because clamping was a more reliable solution. But on any view clamping was not the only "solution" adopted in the prior art. Moreover, I do not regard Dr Stark's preference for clamping, which plainly informed his evidence, as warranting the conclusion that it would not have been apparent to a non-inventive skilled worker to try the combination of integers ultimately used in the invention as claimed in the Patent.
227 Thus far I have considered the question of obviousness independently of the AT&T 110 connector. I have, however, found that the AT&T 110 connector formed part of the prior art at the priority date for the purposes of obviousness. That finding, in my view, strongly reinforces Tyco's case. The AT&T 110 connector, although not having all the features of the patent in suit had many of them. In particular, it had resiliently deformable flanges that, as I have found provided both strain relief and wire retention (although they were not the exclusive sources of strain relief). Each pair of flanges constituted a slot into which the conductor was placed.
228 Given these characteristics and having regard to the evidence to which I have referred, it seems to me a very short step for the non-inventive skilled worker to consider it worthwhile to consider the combination of integers embodied in the Patent. Making the slot narrower at the top so as to resist vertical forces was, as Mr Yates suggested, self-evident. Using one pair of resiliently deformable flanges or tongues instead of two can hardly be regarded as anything other than an unimaginative modification of an established technique in the same field. Dispensing with the connecting block falls into the same category.
229 I did not understand 3M to contend that, if Tyco made out its case on obviousness in relation to claim 1, it nonetheless should not succeed in relation to claims 4, 6, 8 and 9. Mr Catterns did not say anything in opposition to Mr Yates' submission that none of any additional features referred to in claims 4, 6 and 8 could transform the claimed invention into one involving an inventive step. In any event, I regard the evidence to which I have referred as satisfying me that claims 4, 6 and 8 involve no inventive step. Claim 9, the omnibus claim, stands in the same position as claim 1.
230 In my opinion, Tyco has made out its case on obviousness and is entitled to succeed on its cross-claim.
THE SECTION 40 GROUNDS
231 There is no need to address Tyco's submission, which was not fully developed in argument, that the claims in the Patent did not properly define the invention.
ORDERS
232 I direct Tyco to bring in short minutes of order consistent with these reasons for Judgment. I shall also direct the parties to make written submissions as to costs.
I certify that the preceding two hundred and thirty two (232) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice SACKVILLE. |
Associate:
Dated: 26 September 2001
Counsel for 3M: |
Mr D K Catterns QC with Ms K Howard |
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Solicitor for 3M: |
Freehill Hollingale & Page |
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Counsel for the Respondent: |
Mr D M Yates SC with Ms A Bowne |
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Solicitor for the Respondent: |
Mallesons Stephen Jaques |
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Dates of Hearing: |
2, 3, 4, 5, 6, 9, 10, 23, 24 & 25 July 2001 |
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Date of Judgment: |
26 September 2001 |
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URL: http://www.austlii.edu.au/au/cases/cth/FCA/2001/1359.html
