Windsurfing v Petit - Judgment 28-Jun-84

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; / IN THE SUPREME COURT /. -bF NEW SOUTH WALES

EQUITY DIVISION

No. 3079 of 1981 No. 2135 of 1982

CORAM: WAD DELL, J.

Thursday, 28th June 1984.

WINDSURFING INTERNATIONAL INC. & ANOR. -v- PETIT & ANOR.

WINDSURFING INTERNATIONAL INC. & ANOR. -v- BORSIMEX PTY. LIMITED

JUDGMENT

HIS HONOUR:

TABLE OF CONTENTS

INTRODUCTION

Nature of proceedings Specification The claims Combination patent Differences

INFRINGEMENT .

.GENERAL MRS. PETIT SALE IN KIT FORM Introduction The law Conclusion

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1 2 6 7 8

8 9

10 10 11 16

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CLAIM 1 rn'troduction Construction

/ Plurality of axes Defendants' joints Figure 2 joint Principles of interpretation Dictionary meanings Technical evidence Literal meaning Specification Conclusion

CLAIMS 2 - 7

CLAIM 8

CLAIM 9

CLAIM 10 Introduction Law Conclusions

VALIDITY SUMMARY LACK OF NOVELTY Introduction Law Darby

Eastaugh Evidence in chief Challenge to credibility Inconsistencies, exaggerations, etc. The MacFarlanes Meeting with Kelly and Dulhunty Sailing to windward Corroboration Other matters Anticipation

Pear son George

. Morris

OBVIOUSNESS Law Darby Other prior uses General common knowledge Conclusion

CONCLUSIONS

ii.

16 16 17 17 17 18 19 22 23 28 31 33

35

35

36

37 37 41 46

49 50 50 51 57

69 69 75 76 82 86 91

105 105 108

110 112 114

116 116 117 118 119 120

122

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INTRODUCTION

Nature of Proceedings.

Two proceedings have been heard together by consent.

Each of them is a claim for injunctive relief and damages in

respect of a convention patent, the complete specification of

which is entitled "Wind Propelled Apparatus". The patent

was originally granted in the United States, to Henry Hoyle

Schweitzer and James Robert Drake, and is generally called

"the Schweitzer patent". The Australian patent was

granted on 14 March 1975, its priority date being ·27 March 1968,

the date of making of the basic application. The first

plaintiff, Windsurfing International Inc., a cQrporation

organised and existing under the laws of the State of

California in the United States of America, is the proprietor

of the patent by assignment from the original inventors.

The second plaintiff, Sailboards Australia Pty. Limited, claims

at all material times to have been an exclusive licensee of

the patent in Australia and if so may, of course, bring

proceedings for infringement.

The complete specification commences by· saying:-

"The field of art to which the invention pertains includes the field of ships, particularly sail boats and ice boats, and the field of land vehicle sail attachments."

So far as the proceedings are concerned the commercial

importance of the patent lies in its application to sail-

boards. Sailboards Australia has had, for some years, a

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substantial business selling sailboards in Australia, some

manufactured here and some manufactured abroad under licence.

The first proceedings to be commenced were against

Madeleine Petit by summons filed on 12 August 1981. Madowind

Pty. Limited was added as a defendant shortly afterwards.

These defendants have imported and sold Crit boards, a French

design, which the plaintiff alleges are an infringement. The

second proceedings were commenced by statement of claim filed on

4 May 1982 against Borsimex Pty. Limited. This defendant has

imported and sold Wayler boards which the plaintiff claims are

an infringement of the patent.

In each case the defendants deny infringement and

assert that the patent is invalid on the grounds of lack of

novelty and obviousness and on other grounds. In each case

the defendants have counterclaimed for revocation. The

defendants assert that Sailboards Australia was not an exclusive

licensee at the time the proceedings commenced and thus not

entitled to the relief sought. The issues of infringement

and validity raise a number of questions of construction of the

claims and also the question whether the sale of sailboards in

the form of a kit containing the various parts of a sailboard

which are later assembled by the purchaser, is an infringement.

Specification.

After the opening paragraph which has already been

quoted, the specification continues :

2.

• itlf . "

11 Sail propulsion has been suggested as a motive means not only for boats and iceboats, but also for such watercraft as surfboards and landcraft such as skateboards and sleds, i.e., generally any lightweight small craft. Typically, a sail is provided on a mast that is rigidly secured to the craft in a vertical position or else the sail and mast are entwined in a network of riggings and control mechanisms.

The general effect of providing a sail on a normally sail-free vehicle is to convert the vehicle into a water or land-boat. Thus, by rigidly securing a sail to a surfboard, the feel of the surfboard and enjoyment as such is lost and the skill normally required to control it is no longer needed. Instead one obtains the speed and feel of a light sailboat and needs substantially only those skills appropriate to control a sailboat. The same 'denaturing' occurs with other vehicles modified to bear a sail.

A further problem arises when a sail is fitted to a vehicle that does not have high roll stability in that sudden or ~xcessive winds can overturn the vehicle.

A need therefore exists for safety providing wind-propulsion means for a vehicle not normally so equipped but which means preserves the original ride and control characteristics of the vehicle. "

The consistory clause follows in these terms

11 The present invention provides wind propulsion means for a vehicle that adds new dimensions of wind responsiveness and speed and yet enhances the vehicle's normal ride and control characteristics to greatly increase the enjoyment obtained therefrom. Wind-propelled apparatus is provided comprising vehicle body means adapted to support a user and wind-propulsion means pivotally associated with the body means and adapted to receive wind for motive power. The position of the·propulsion means is controllable by the user and is substantially free from pivotal restraint in the absence of such control."

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The specification then enlarges on some of the

details of such apparatus as follows :

"In particular embodiments, the propulsion means is connected to the vehicle body by means of a universal joint, e.g. a joint having three axes of rotation, or other such joint to enable the propulsion means to be substantially free-floating in the absence of user control.

The wind propulsion means can comprise a spar pivotally attached to the vehicle body and a sail on the spar. Means are provided to allow the user to grasp,the sail on· one or both sides thereof. Thus, a boom is provided laterally disposed on the spar to hold the sail taut and provide a hand-hold. In particular embodiments, a pair of booms is provided arcuately ~onnected athwart the spar and securing the sail therebetween."

The specification then deals with the application and

use of the invention :

" The invention can be used on water-craft, iceboats and landcraft. It can be used on small yachts, runabouts, canoes, rowboats, and other such craft, but is most advantageously used on small· and lightweight vehicles such as surfboards, iceboats, skateboards, and sleds. Leeboard means can be provided for a watercraft of low roll stability such as a surfboard. The term 'leeboard' is meant to include centre boards and daggerboards, as these terms are known to the sailing art, as well as other projections from the body of the craft, planar or otherwise extending into or onto the water for stabilization.

The present invention allows essentially all of the steering and control to be accomplished through the sail; i.e. no rudder or other steering mechanism is needed, although such need not be excluded. One may accelerate, turn and tack merely by manipulating the sail. However, because the sail is pivotally unrestrained,

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"it must be held by the user with the user relying on his skill with the vehicle for balance. In the event of sudden or excessive winds, the user need only release the sail and it will immediately fall in any direction, freeing the vehicle from the propulsive force."

Then there is a detailed description of a particular

embodiment of the invention illustrated by drawings accompanying

the specification. The drawings are of a sailboard.

Brieflyr it consists of a body like a surf board which has a

removeable dagger-board, or fin, inserted through an opening

provided in the board and projecting obliquely from the

bottom. The top portion of the dagger-board extends beyond

the top surface of the surfboard to provide a platform to

which is attached by a vertical screw a three-axis universal

joint. The detail of the joint is shown in figure 2.

A spar which acts as a mast fits into and is attached by

screws to the top section of this joint. The spar carries

a triangular sail being inserted into a hem along the leading

edge. The sail is extended from the mast by means of and

between a pair of curved booms which are "arcuately connected

at both their ends".

The specification then describes the method by which

such an embodiment of the invention is used as follows (the

references are to the drawings) . -. " In operation, the user stands on the top 28 of the surfboard 10 behind the point where the spar 12 is attached by the universal joint 36 and grips one or the other of the booms 16 or 18. If he were going before the wind and wished to make a turn, he would tilt the sail 14 forward, thus applying the force of the wind to the nose of the

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"surfboard 10 and causing the board 10 to turn to the left or right depending on which side of the sail 14 was windward. On the other hand, if he wanted to come about into the wind for the purpose of tacking, he would pull the sail 14 backwardly to apply the force of the wind to the rear of the board 10, causing the rear of the board 10 to move so as to come into the wind. As he is into the wind, he may complete the tack by merely walking in front of the sail 14, grasping the boom on the other side and setting the sail 14 so that the wind captures it and the board 10 is then on its new course. The sail may be manoeuvred forward and backward for speed control.

In the event that a sudden surge of wind threatens to capsiz~ the surfboard 10, the user may merely release the sail 14 and it will fall free into the water, completely removing the danger. The sail 14 is provided at its spar 12 end with a rope 106 so that the user can readily pull the sail 14 back into sailing position."

The specification concludes

" It will .be understood that modifications and variations may be effected to adapt the foregoing apparatus for the expediencies of particular applications without departing from the scope of the novel concepts of this invention."

The claims:

follows

The claims defining the invention are stated as

"1. Wind-propelled apparatus comprising: a body adapted to support a user while being propelled by the wind, a mast pivotably coupled to the body by means of a joint extending between the mast and the body, said joint comprising the sole means extending between the mast and the body and having a plurality of axes of rotation for permitting the mast to pivot out of the vertical attitude along any of a plurality of vertical planes; a sail; and means for extending the sail laterally from the mast.

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"2. The apparatus of claim 1 including means for said user to hold said sail.

3. The apparatus of claim 1 or 2 wherein said means for extending the sail comprises a boom laterally disposed on said mast to hold said sail taut and adapted to provide a hand-hold for said user.

4. The apparatus of claim 1, 2, or 3 including means adapted to enable said user to grasp either side of said sail.

5. The apparatus of any one of claims 1 to 4 adapted as a watercraft.

6. The apparatus of claim 5 including water stabilizing means associated with said body means.

7. The apparatus of claim 5 or 6 including leeboard means associated with said body means.

8. The apparatus of any one of claims 1 to 7 wherein the mast and sail are substantially the sole means for changing the direction of travel of said apparatus.

9. The apparatus of any one of claims 3 to 8 wherein said boom comprises a pair of boom members"arcuately connected athwart said mast and securing said sail therebetween.

10. Wind propelled apparatus substantially as hereinbefore described with reference to the accompanying drawings."

Combination Patent.

It may be observed here that the patent is for a

combination of integers. Each of these, the surfboard,

skeg, retractable fin, mast, triangular sail, wishbone boom,

and universal type joint, was admittedly well known among part

at least of those to whom the specification was addressed,

namely, to users and manufacturers of surfboards and small

sailing craft. The novelty of the combination was that the

spar or mast is not stayed but is free to move under the

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direct manual control of the rider and is able to fall freely

in any direction when released. This feature enables the

craft to be steered and sailed in a way which is quite

different from conventional sailing apparatus in which the mast

is stayed, steering effected by a rudder and sailing controlled

by other means. It meets the problem mentioned in the

specification of denaturing the body on which the sail is

mounted and preventing it overturning.

Differences.

The sailboards with which the defendants are concerned

differ from that illustrated in the patent in several respects.

The most important of these is that the joint connecting the

mast to the board is not of a three pin type but gets its

capacity for universal movement from either a rubber coupling

or a rope coupling and the mast step is not on the top of the

skeg but on the board ahead of it. There are some differences

in the way in which the two booms are attached at either end

and, in general, more modern and appropriate materials are

used.

INFRINGEMENT

GENERAL.

There is no dispute that it is established by the

evidence that the defendants Madowind and Borsimex offered

their boards for sale before the proceedings commenced.

Accordingly, if their boards come within the claims of the

patent they are guilty of infringement. There is ample

evidence that if not restrained they will continue to carry· on

a.

business selling their boards. It is disputed, however, that

there is any evidence of any infringing act on the part of

Mrs. Petit.

MRS. PETIT.

The event which apparently provoked the proceedings

against her occurred at Narrabeen Lakes on 1 August 1981 when

Mr. Kelly, a director of Sailboards Australia, saw there the

full component parts of a 11Crit 600" and a "Crit 630" sailboard

at a place where both Mrs. Petit and her husband were present.

She told Mr. Kelly that she had a shipment of 11 Crits" coming to

Australia during the middle of the month and gave him a pamphlet.

There is no evidence that Mrs. Petit was offering boards for

sale on this occasion.

Then Mr. Dulhunty, also a director of Sailboards,

attended the Sydney International Boat Show on 7 August 1981 and

saw there a range of 11 Cr1t 11 sailcraft which were not assembled

but were in their component parts. Mrs. Petit was at the

display stand, which was that of Madowind Pty. Limited.

Somehow or other, in circumstances of which there is no evidence,

there came into Mr. Dulhunty's possession before he swore his

affidavit of 12 August 1981, a business card for Madowind which

had Mrs. Petit's name printed on it but which did not describe

her position with the company. Madowind Pty. Limited was

incorporated on 21 April 1981 under another name and changed to

its present name on 16 June 1981.

Somer~correspondence before the proceedings commenced

between the plaintiffs' solicitors and Mrs. Petit is in evidence

which it is submitted constitutes an admission by Mrs. Petit of

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infringement by importing and selling "Crit 11 boards. Mrs.

Petit did not give any evidence. In my opinion the

correspondence does not amount to such an admission, either taken

on its own or in association with the other evidence, nor does

the evidence, as a whole, prove any act of infringement on

Mrs. Petit's part before proceedings against her were commenced

on 12 August 1981.

SALE IN KIT FORM.

Introduction:

The evidence shows that sailboards are invariably sold

in an unassembled form although, of course, the advertising

material of the defendants shows assembled sailboards being

sailed. In each sale the board is sold together with mast

and booms and a bag containing the remaining parts namely, the

sail, dagger-board (i.e. the centre board or fin), skeg (a fixed

fin attached by screws to the back of the board), flexible joint,

and various ropes. The kit includes instructions for assembly.

In some cases there are, in addition, sail battens.

Sailboards are normally transported and stored in an

unassembled form. This is obviously done as a matter of

convenience because it is not practicable to do so in an

assembled form.

It is submitted for the defendants that "it is the law,

which this Court is bound to apply, that the sale of parts, which, .

when assembled, would infringe, is not itself an infringement,

even if the seller intended or advised that the parts should be

assembled so as to infringe and even if there is no other way of

using the parts other than in a way that infringes".

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The Law:

It is submitted for the defendants that the above

statement of the law has been settled for Courts in Australia by

the Full High Court decision in Walker -v- Alemite Corporation,

(1933) 49 CLR 643. In that case the plaintiff claimed

infringement of a patent for lubricating apparatus. Claim 1

was for a grease cup independently of the remainder of the

apparatus of which it was a part. Other claims related to the

apparatus considered as a whole. The plaintiff contended that

a grease cup manufactured by the defendant infringed claim 1.

Further, it contended that it infringed the other claims

because the grease cup would or had inevitably to be used with

the other parts of the plaintiff's invention. It was held

that there was no infringement of the first claim. It is the

passages in the reasons given by members of the Court rejecting

any infringements of the remaining claims upon which the

defendants rely. Dixon, J said, at 658

"But, in any event, it is settled law that the exclusive property in a combination invention is not infringed upon by the sale of the components (Townsend v. Haworth (1875) 12 Ch.D. 83l(n))~ that selling articles to persons to be used for the purpose of infringing a patent is not an infringement of the patent (per Fry, J., Sykes v. Howarth (1879) 12 Ch.D. at p.833)~ and that sale with a knowledge that the purchaser will use the articles for infringement is not itself an infringement although the vendor gives the purchaser an indemnity: the vendor must have m~de himself a party to the act of infringement (per Mellish, L.J., Townsend v. Haworth (1875) 48 L.J. Ch. at p.773(n)~ Dunlop Pneumatic Tyre Co. v. David Moseley & Sons Ltd. (1904) 1 Ch. at pp.616,620). Further, in

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"the opinion of Vaughan Williams L.J., it is not enough that the article sold has no other use than a use in the course of what amounts to infringement((l904) 1 eh., at pp.616, 618, 619). The basis upon which these rules rest is that whatever is not included in the monopoly granted is publici juris and may be freely used as of common right. Narrow as this view of what constitutes participation in infringement may appear, it requires us, in my opinion, to hold that the claims 4 to 11 (the other claims) of the specification were not infringed."

McTiernan, J expressed agreement with the judgment of Dixon, J.

Rich, J said

"The attempt to support the judgment appealed from by reference to the claims for the entire lubricating appliance cannot, in my opinion, succeed in face of the authorities which establish that the sale of a component part of a combination claim for an entire machine is not an infringement of a combination (Dunlop Pneumatic Tyre eo. v. David Moseley & ·sons Ltd.)"

Starke, J, with whom Evatt, J concurred, said, at 654

"Such a manufacture is in itself lawful, and knowledge, even on the part of the manufacturer, that the single parts will be used for the purposes of infringement is not enough to render him liable as an infringer (Townsend v. Haworth; Sykes v. Howarth; Mceormick v. Gray; Dunlop Pneumatic Tyre eo. v. David Moseley & Sons Ltd."

I turn now to the cases mentioned. Townsend -v- Haworth,

more fully reported in a note 48 LJ (NS) Ch. at 770, concerned

a patent for preserving vegetable and other textile materials

and fabrics from mildew and decomposition by the application of

chemicals. It was alleged in the plaintiff's bill that the

defendant company had infringed the patent by supplying

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' chemicals to the defendant Haworth with the intention that

they should be used by him and others in infringement of the

letters patent and which were actually used for this purpose.

The demurrer was allowed by Jessel, MR who held that the

company could not be treated as an actual infringer.

decision was upheld on appeal in which Mellish, LJ said

"Selling materials for the purpose of infringing a patent to the man who is going to infringe it, even although the party who sells it knows that he is going to infringe it and indemnfies him, does not by itself make the person who so sells an infringer. He must be a party with the man who so infringes, and actually infringe."

This

In Dunlop Pneumatic Tyre eo. the plaintiff's claim was

that the defendant had infringed two patents, each of which

was for a combination which included a rubber tyre, by the

manufacture of tyres adapted for use in accordance with each .

of the patents. In the_ course of his reasons, in a passage

not referred to by Dixon, J, Vaughan Williams, LJ said, at

619

"I wish to say a word about United Telephone eo. v. Dale (25 Ch.D.778). In that ease in the course of the argument Pearson J. said: 'If there was a patent for a knife of a particular construction, and an injunction was granted restraining a defendant from selling knives made according to the patent, and he was to sell the component parts so that any school-boy could put them together and construct the knife, surely that sale would be a breach of the injunction.• I have not now to determine whether that observation was right or not, but, so far as I am concerned, I can see no reason for saying that it is wrong, and there is nothing in my present judgment which is intended to be inconsistent with it.

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"If you are in substance selling the whole of a patented machine, I do not think that you can save your~elf from liability for infringement, because you sell it in parts which are so manufactured as to be adapted to be easily put together. But that is not the present case. What is complained of here is merely the sale of one or other of the parts of the tyres patented by the plaintiffs."

The plaintiffs, of course, rely heavily on this statement.

Although it is obiter it does, in my opinion, form part of a

careful chain of reasoning, the purpose of which was to outline

the ambit of the principle being dis9ussed by his Lordship.

The other members of the Court, Stirling and Cousens-Hardie,

LJJ, expressed agreement with Vaughan Williams, LJ, but in

terms which do not necessarily reflect approval of the .passage

quoted.·

In United Telephone Company -v- Dale, the two defendants

had been restrained by-injunction "from manufacturing, selling,

supplying, letting on hire, or using any instruments

manufactured to the specifications of the plaintiffs' patents

respectively". The proceeding was a motion to commit the

defendants for contempt for breach of the injunction. The

defendants had issued an illustrated descriptive price list

offering for sale all the items which were necessary to form an

instrument which, when complete, would have been an infringement

of the plaintiffs' patents. It appeared that the parts could

be put together without any difficulty by an ordinary skilled

workman in a very short time. There was a note stating that

the defendants had withdrawn from further sale the instruments

referred to in their previous catalogue, apparently those the

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subject of the injunction. The defendants admitted that

there had been breaches of the injunction and, accordingly,

the judgment of Pearson, J is concerned with other matters.

A case with some similarities is E. M. Bowden's

Patents Syndicate Limited -v- Wilson, (1903) 20 RPC 644, a

decision of Swinfen Eadie who was the trial Judge in Dunlop

Pneumatic Tyre Company. An injunction had been granted

against the defendant restraining him from infringing two

letters patent relating to bicycle brakes by, among other

things, "selling ••• articles of the' same construction as

those described in the Specifications of the ••• Letters

Patent". At the request of a person acting in the

interests of the plaintiff, the defendant sent by post all

the component parts of a brake which had not been put together.

His Lordship expressed the view that there was no doubt .

whatever that this was an infringement of the plaintiff's

brake.

Three other decisions have been referred to by the

defendants: Cincinnatti Grinders -v- BSA Tools, ((1931)

48 RPC 33 at 47 line 39, 48 line 3, and 58 lines 5-23;

Adhesive Dry Mounting -v- Trapp, (1910) 27 RPC 341 at 353

line 10; and Firth Industries -v- Polyglass, (1975) 32 CLR

489 at 497. However, I do not think that these assist

in solving the present problem.

15.

Conclusion.

In none of the cases cited were the facts before the

Court of the same kind as those now under consideration.

Here the evidence is that sailboards are ordinarily sold in an

unassembled form as a matter of convenience and that the user

assembles the board in order to use it and takes it apart after

use for the purpose of transport or storage. The question

is whether, in these circumstances, sale in kit form of a

complete set of parts which, when assembled, will come within

any of the claims of the patent is an infringement of the

exclusive right given by :s.60 of the Patents Act "to make,

use, exercise and vend the invention in such manner as he

(i.e. the patentee or licensee) thinks fit, so that he shall

have and enjoy the whole fruit and advantage accruing by

reason of the invention". Provisions to this effect were

in force at the time of each of the decisions cited. In

the present case it seems to me, having regard to the evidence,

that the sale of such a kit is an infringement of the right

given by s.69 because of the ordinary course which vending

the invention takes. I do not see anything in the decisions

cited which prevents this Court reaching such a conclusion.

CLAIM 1.

Introduction.

The defendants admit that the Crit and Wayler. sail

boards marketed by them have the elements mentioned in claim 1

except that they deny that in their products the mast is

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"pivotably coupled to the body by means of a joint extending between the mast and the body, said joint comprising the sole means extending between the mast and the body and having a plurality of axes of rotation for permitting the mast to pivot out of the vertical attitude along any of a plurality of vertical planes".

The resulting issue raises a question of construction

of the words quoted.

Construction.

Joint having a plurality of 'axes of rotation for

permitting the mast to pivot out of the vertical attitude:

The defendants submit that claim 1 "requires that there be a

joint which has a plurality (two or more) physically

identifiable shafts or pins or other physical equivalent in

the apparatus at rest ·and they must be such as to permit the

mast to "pivot", that is, to turn on the shafts or pins or

other physical pieces.

It is submitted for the plaintiffs that the requirement

that the joint have "a plurality of axes of rotation" merely

m~ans that it should have "the capacity for a plurality of axes

of rotation".

The Defendants' Joints. To understand the reasons

for these submissions it is necessary to describe the joints

used in the defendants' boards. In these reasons, unless

otherwise indicated, the parts of sailboards or other sailing

craft will be described in terms appropriate to the board or ·

body of the craft being in a horizontal position and the mast

vertical.

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Each of the defendants uses a joint comprised of

three parts. The bottom part consists of a vertical shaft

which is placed in a corresponding female part in the mast

step and which has provision for locking it therein. The

top section consists of a plastic cylinder which fits into the

bottom section of the mast which is hollow. In use the mast

is firmly attached to this section because the downhaul of the

sail is lashed to it. The downhaul is a rope or sheet

attached to the bottom of the sail adjacent to the mast for

the purpose of stretching the sail along the mast. The top

and bottom sections are linked together by a cylindrical

waisted flexible rubber block. In the Crit joint, that

used in the board sold by Madowind Pty. Limited, the top part

is free to rotate about its vertical axis on a spindle which

links it to the rubber joint. In the Wayler joint both

the top and bottom parts are free to rotate in relation to the

rubber block about their vertical axes.

Both Madowind Pty. Limited and Borsimex Pty. Limited

admit to having sold sailboards before the commencement of

proceedings against them with a joint which has been called a

"rope" joint. It consists of a top and bottom part similar

to those already described. The two parts are linked

together by a piece of thick rope which is anchored in the

bottom part and which passes through the top part, being se,cured

by a knot against a washer. The linkage is such that the top

and bottom.parts are separated by about two centimetres. The

top part is free to rotate about the rope.

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Each of the three joints described permits the mast of

a board to fall freely in any direction if not held by the user.

Each also permits the mast to revolve about its own axis

whether in the vertical or any other position. With the Wayler

joint when the mast is not vertical, it can rotate around the

vertical axis of the lower part of the joint because of the

freedom of movement mentioned above. The other two joints

permit the mast to rotate similarly because of the flexibility

of the rubber block and the rope.

The Figure 2 Joint. The construction of the above

joints may be compared with the joint illustrated and described

in the specification. It is described as a "three-axis

universal joint". The top section consists of brace plates

attached by screws to opposite sides of the cylindrical wooden

heel or bottom end of the mast. The brace plates have

extended portions which are disposed on opposite sides of a

short section of stainless tubing to which they are linked by a

pin which passes horizontally through holes in each brace plate

extension and through the top section of the tubing. The

bottom section of the joint consists of a u-shaped clevis of

stainless steel sheeting, the bottom part of the U being

secured to the top of the dagger-board by means of a vertical

screw which allows it to rotate around a vertical axis.

The clevis is secured to the section of tubing by a horizontal

pin which passes through holes at the top of each side of the U

and in the bottom part of the tubing, this pin being at right

angles to the pin securing the top section. This joint

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permits the mast to move, that is rotate, either solely about

the longitudinal axis of the top pin or solely about the bottom

pin or by a combination of both movements tQ rotate around

any notional axis lying in between. The mast is not, as it

is in the other joints, free to rotate around its own axis if it

is not in a vertical position but it is free, as in the case of

the defendants' joint, to swivel around the vertical axis

passing through the bottom part of the joint.

The joint illustrated in the patent is described in

the specification as a three-axis universal joint, the three

axes being the vertical axis constituted by the pin securing the

bottom part of the joint to the dagger-board and the two

horizontal axes constituted by the pins passing, at right angles

to each other, through the cylindrical piece of tubing. It

would permit the mast to fall in any direction.

The defendants' three joints are also universal joints

in this particular sense. But they do not have any shafts or

pins or other physical pieces on which the mast may turn or

"pivot", or which may be identified as an axis of rotation.

The only sense in which they have axes of rotation is that

when the mast and the top part of the joint moves in relation

to the board it may be said to move about a notional axis

passing through the ·joint.

Principles of Interpretation. Much has been

said by way of submissions as to the principles in

accordance with which the claim should be interpreted.

Further, both sides have called technical experts who have

given their views at great length as to the meaning

1 9 •

;

which should be attached to the various words employed and the

way in which the movements of the various joints may be analysed

technically.

For present purposes the relevant principles are,

I think, those which appear from the following quotations.

In Catnic Components Limited -v- Hill & Smith Limited, (1982)

RPC 183 ·at 24 2-3, Lord Dip lock said :

"My Lords, 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 (i.e. '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 socalled '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 induige."

In E.M.I. Limited -v- Lissen Limited, (1939) 56 RPC 23 at 41,

Lord Russell said

"I would point out that there is no question here of words in Claim 1 bearing any special or unusual meaning by reason either of a dictionary found elsewhere in the Sp~cification or of technical knowledge possessed by persons skilled in the art. The prima facie meaning of words used in a· claim may not be their true meaning when read in the light of such a dictionary or of such technical knowledge; and in those circumstances a claim, when so construed, may

20.

"bear a meaning different from that which it would have borne had no such assisting light been available. That is construing a document in accordance with the recognised canons of construction. But I know of no canon or principle which will justify one in departing from the unambiguous and grammatical meaning of a claim and narrowing or extending its scope by reading into it words which are not in it~ or which will justify one in using stray phrases in the body of a Specification for the purpose of narrowing or widening the boundaries of the monopoly fixed by the plain words of a claim."

In the joint judgment of Barwick, CJ 'and Mason, J in Interlego AG

-v- Toltoys Pty. Limited, (1973) 130 CLR 461, the following is

said :

"However, the settled rule is that in ascertaining the width of a particular claim it is not permissible to vary or qualify the plain and unambiguous meaning of the claim by reference to the body of the specification. (478)

If the expression is not clear it is then permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification. (479) "

The persons to whom the present patent should be said

to have been addressed were, in my opinion, by no means a

narrow group of people. They were, I think, persons

interested in the manufacture or use of or the turning to profit

of small vehicles capable of being propelled by wind and in

particular ice sleds, small boats, surfboards, and other water

21.

1.-

craft. Such persons are likely to have had an association

with sailing and boats and can be assumed to have had a good

knowledge of then existing sailing equipment and techniques.

Dictionary Meanings. It is convenient to begin

with the meanings given by the main dictionaries to the words

which are in contention. I have taken these dictionaries

to be The Shorter Oxford English Dictionary on Historical

Principles, 3rd Edn., 1933, republished with corrections, 1973;

Websters' New International Dictionary of the English Language,

2nd Edn., unabridged revised, 1958; and The Macquarie

Dictionary, 1981 (as a check only for local variants).

The relevant meaning given by Oxford to the word

'"joint" is :

"that where in or whereby two members or elements of an artificial structure or mechanism are joined or fitted together, either so as to be rigidry fixed ••• , or as in a hinge, pivot, swivel".

The relevant meaning given to the verb "couple" by the Oxford

Dictionary is :

"to fasten or link together (properly in pairs)J to join or connect in some way".

The meanings given to these two words by the other dictionaries

correspond.

"Pivotably" in the context clearly means "so as to be

able to pivot". The Oxford Dictionary gives the following

meaning for the intransitive verb "pivot":

"to turn as on a pivot1 to hinge1 in military usage to swing around a point as centre. Chiefly in figurative use "

22.

Websters gives

Macquarie gives

"to turn or swing on or as on a pivot; to hinge".

"to turn on or as on a pivot".

The noun "pivot" is given substantially the same

meaning by the three dictionaries, namely, a short shaft or pin

on which something turns or oscillates or rotates.

The word "plurality" is given a variety of meanings

but the parties are agreed that in the present context it should

be given the meaning of "comprising of more than one".

The expression "axes of rotation" has given rise to a

great deal of contention. The meaning given to "axis" by the

Oxford Dictionary is divided into a number of parts, the first of

which is headed "Axis of rotation" Under this heading the

following meanings are relevant

"1. The axis of a wheel. Probably obsolete. 1619. In figurative use. The 'pivot' on which a matter turns.

3. The imaginary straight line about which a body (e.g. the earth) rotates ••. ".

Websters gives the following meanings which are relevant

"1. Axle of a wheel. Now rare.

2. A straight line, real or imaginary, passing through a body, and on which the body revolves or may be supposed to revolve".

The 3rd Edn. of Webster, 1976, describes the meaning of axle of

a wheel as archaic. Macquarie gives a similar meaning to 2.

22.

All three dictionaries give the same meaning to the word

"rotation", that in Websters being "to turn about an axis or

centre".

Technical evidence: Each side has called experts

to give evidence of what they understand to be the meaning of

some of the words used in claim 1.

The plaintiffs called Dr. Baker, a senior lecturer in

applied mechanics, civil mechanics, and industrial engineering,

.at the University of New South Wales. He has made a special

study of linkage kinematics, which is,the science of relative

motion capability between jointed rigid bodies. Kinematics

is the study of motion. It may be compared with kinetics

which is the study of the relationship between force and motion.

He has no experience or knowledge of sailing. He gave evidence

as to the meaning he would give to the words in question in

analysing the relevant movement of two bodies. He understands

"axis of rotation" as being "the line about which relative motion

takes place", this line being "always imaginary" and said:

"There is no axis unless rotation takes place". He defined a

"universal joint" as "one which comprises global motion between

two bodies connected by the joint", global motion being one

"which permits relative motion to allow any relative orientation·

between two bodies concerned, that is, one body may stand in any

angular position relative to the other body".

He expressed the view that the joint in figure 2 of the

drawing in the patent would allow global motion as would also one

of the joints used in the plaintiffs' boards, which was admitted

into evidence as exhibit B. It was admitted merely as an

23.

.,

example to understand the claims of' the patent and is a joint

which is, in principle, of the same construction as that in

figure 2 of the drawings. He said that each of the

defendants' joints has the ability to allow global motion

which he defined, when giving this opinion, "as a motion

which is comprised of rotations about three axes which are at

right angles to each other". He said that in the case of

a rubberised joint one of these axes of rotation is allowed

by the mast about the joint and the others are allowed by

the rubber joint itself because there is a possibility of

deforming it.

He said that he understood the word "pivot" to mean

"to change orientation or to rotate" and that if the mast of

a sail board were to pivot "it would rotate relative to the

sailboard". On the other hand, if the mast were to

rotate only along its longitudinal axis that would not be a

type of movement which would be described as pivoting. If

a sailboard rider were to release the mast and it fell it

would rotate.

He said that each of the plaintiffs' joint and the

defendants' joints could be made to rotate by changing the

relative position of the top and bottom portions by hand.

During such rotation there would be an axis of rotation

present for each particular movement which would be the same

in all joints.

His evidence in relation to the plaintiffs' joint

makes it clear that the top part of the joint can swivel

around on the vertical pin which connects the middle part to

the bottom part and that the top part can move out of the

24.

.,

vertical in the tv;o vertical planes through which each of the

horizontal pins pass at right angles and in any intermediate

vertical plane. When pivoting in any intermediate vertical

plane the top part may be described as pivoting on each of

the horizontal pins and also as having a notional axis of

rotation at right angles to the actual plane in which movement

is taking place.

Each of the defendants' joints permits the top part

to swivel in the same way as does the plaintiffs'. It

also permits the top part to pivot out of the vertical attitude

along any vertical plane. In the case of these joints,

however, there is no movement around any pin. The movement

is around a notional axis at right angles to the plane in

which movement is taking place. Because of the rubber and

rope structure of the defendants' joints this axis will

change slightly during the course of movement, each of the axes

being parallel to the other. The notional axis of rotation

for any movement of the plaintiffs' joint, and hence of the

joint in the drawings in the patent, changes similarly to a

slight extent when the top part is pivoting out of the vertical

in any plane intermediate between the two pins. Such change

of axis is called "translation".

The defendants called Professor Joubert, Professor in

mechanical engineering at the University of Melbourne. He is

also a naval architect of considerable experience who has

designed a number of yachts which have been successful in

racing. He expressed the view that the defendants' rubber

joints had only one axis of rotation, namely that represented

25.

,

by the vertical pin connecting the rubber block to the bottom

part. Similarly, the rope joint had only one axis of rotatio~

apparently about a vertical axis represented by the rope. On

the other hand, the joint shown at figure 2 of the patent had

three axes, a vertical one, and two horizontal ones at right

angles to each other. He said that in the case of the

defendants' joints, when the mast fell out of the vertical

attitude it did not rotate about any axis or axes of rotation

that he could clearly identify but he recognised that

theoretically there was an axis about which the rotation took

place. On the other hand, when the mast attached to a

figure 2 joint fell out of the vertical attitude it rotated

around the two axes formed by the horizontal pins. However,

the plaintiffs' boards could not be sailed unless there was

also a vertical pin permitting the mast to swivel around it.

Contrary to the dictionary meaning of the expression,

he defined "universal joint" as meaning, for engineering

purposes, a Hooke's joint, which is a joint used to transmit

rotation from one shaft to another which is not in the same

alignment. In this joint each of the shafts is rigidly

connected to a U-piece, each of which is linked together by

two pins at right angles to each other which lie in the same

plane. This understanding is, of course, at variance to

the dictionary meaning. He described joints such as that

in figure 2 of the patent as "spherical joints".

He understands the verb "to pivot" as meaning

"rotation between two links about a pivot", that is, an axle

or a pin and bearings about which rotation takes place".

He therefore excludes part of the dictionary meaning, that

26.

is, to turn as if on a pivot. Accordingly, in his view,

when the mast in the patent drawings moves out of the vertical

it does "pivot" out of the vertical attitude but in relation

to the defendants' joints it does not because there are no

actual axles or pins present about which the rotation takes

place.

The above evidence does not, in my opinion, provide

any sound reason for supposing that a person to whom the patent

specification was addressed would have understood any of the

words used in other than their dictionary meanings. In so

far as Dr. Baker regarded the verb "to pivot" as referring to

any relative motion between two bodies, he was going beyond the

dictionary meaning. In the context of claim 1 I see no

reason to depart from it. In confining the meaning of this

verb to turning on an actual pin or axle or physical equivalent,

and in confining the meaning of "axis of rotation" and "rotate"

in a similar way, Professor Joubert adopted a meaning narrower·

than the dictionary meaning. I see no reason to think that a

person to whom the patent was addressed would regard the words

as having less than the dictionary meaning. This leaves, of

course, the possibility that such a person might, on a reading

of the whole of claim 1, conclude that the words were used in

some meaning other than their dictionary meaning.

The defendants submit that a narrower meaning of the

relevant words is indicated by the state of knowledge at the

priority date. Dr. Baker and Professor Joubert have given

evidence as to this. At that time the two classical "global

joints" or "spherical joints", were regarded as being joints of

27.

... 11

the kind shown in figure 2 of the patent and ball and socket

joints. Dr. Baker regards the rubber joint as a third

classical kind of universal joint but he did not know of any

such joint being in use at the priority date. Hence it is

said for the defendants that there would be nothing surprising,

indeed it would be expected, that the draftsman of the claim

should use language .which related only to a joint having

identifiable physical axes of rotation because the only other

alternative, the ball and socket joint, was impractical for

various reasons.· The evidence indicates that rubber blocks

were in use as flexible mountings for engines and that a

cylindrical wasted rubber block was used as a flexible

coupling for exhaust pipes on a particular make of cars. One

other possibility for an appropriate joint has been mentioned

in the evidence, namely, a helical spring. One instance of

its use in an analagou.s situation is as a flexible joint for

radio aerials mounted on motor vehicles.

I do not think that the evidence in this respect

justifies a conclusion that the draftsman of the claim would

regard it as so unlikely that there would be any suitable

joint other than one having identifiable physical axes of

rotation that he would have confined claim 1 to such a joint.

Literal meaning of claim. It is clear from the

context that the joint is a distinct part of the apparatus

because it is specifically required not only to extend between

the mast and the body but also to be the sole means of doing _so.

The latter part of the requirement is, of course, directed to

negativing the presence of rigging or any other restraint upon

28.

the movement of the mast. It is also clear that it is not

to be a rigid joint but one which permits the parts joined to

move in relation to each other by pivoting. The extent of its

capacity to permit pivoting is defined by the words "for

permitting the mast to pivot out of the vertical attitude along

any of a plurality of vertical planes" which, in the context,

obviously means in relation to the surface of the body

representing the horizontal plane. For the purpose of

permitting this movement the joint is to have "a plurality of

axes of rotation".

The use of the word "having" does not, in my opinion,

necessarily imply that the joint must have some physical part

which provides, or may be identified with, such an axis.·

It would be equally appropriate in the context to use this

word in relation to a capacity to provide axes of rotation

which would permit th~ required pivoting of the mast. For

instance, a car may be said to have a particular maximum speed

or an engine that is not running to have a particular horse

power.

The defendants submit that "'to pivot' ,lJ\eaning to

turn as on a pivot, means, and is restricted to meaning, to

turning on a physical shaft or pin or such other physical part

that is the equivalent of a shaft or pin and which may be

described as 'a pivot'. It does not mean or extend to

turning or rotating about on axes that are merely imaginary or

mathematical. Bending is not pivoting." However, it seems

to me that the dictionary meanings do not restrict the word

in the way suggested. In my opinion the expression in its

present context means to turn on a pivot or in the same

29.

manner as would result from being on a pivot. There is, I

think, no reason to require the presence of anything that is

the physical equivalent of a pivot, that is, of a shaft or pin.

It is true, of course, that in one sense "bending is not

pivoting". But a joint which is required pivotably to

couple two objects may be said to have a particular axis of

rotation if, by bending, it permits the mast to move as if

on a pivot in the position of that axis of rotation.

The use of the word "axes" must, I think, be regarded

as significant. By 196 8 it was no, longer a word appropriate

to describe an axle. There is nothing in claim 1 to

indicate that the word was not used in its dictionary meaning

of a ~eal or imaginary line about which a body may rotate.

Using this meaning, for the purpose of claim 1, a joint may

have more than one axis of rotation if it has more than one

pin or part about whicp rotation may take place or if it has

the capacity to permit rotation to take place around more

than one imaginary line, or a combination of the two., so as

to permit the required pivoting of the mast.

The above indicates, in my view, what is the correct

construction to be given to the part of claim 1 under

consideration, namely, that the claim does not require that

there should be a joint which has two or more physically

identifiable shafts or pins or other physical equivalents at

rest, nor does it require that they must be such as to permit

the mast to pivot on such shaft or pin or other physical piece.

All that the claim requires, in my opinion, is that the joint

be able to provide a plurality of axes of rotation which permit

30.

the mast to pivot out of the vertical attitude along any of a

plurality of vertical planes.

It may be observed that on the agreed meaning to be

given to 'plurality', whichever of the two interpretations is

given to the part of claim 1 under consideration, the claim

includes wind-propelled apparatus in which the joint has only

two axes of rotation for permitting the mast to pivot out of

the vertical attitude along only two vertical planes and then

only to a limited extent, say 10° from the vertical. Such

' an apparatus would be obviously impracticable. None of

these considerations is relied upon by either side on the

question of interpretation.

Specification. I turn now to the question

whether such an interpreation of claim 1 is consistent with

the specification of the patent, the relevant parts of which

have been quoted at length above. It will be noted from

the consistory clause that the wind-propulsion means are to be

pivotably associated with the body means, its position is to be

controllable by the user and substantially free from pivotal

restraint in the absence of such control, that is, free from

any restriction on pivoting in relation to the body means.

Following the consistory clause a reference is made to

particular embodiments and to "a universal joint giving as an

example a joint having three axes of rotation" as does the

joint shown in the drawings. Among the meanings of

"universal" the Oxford Dictionary gives :

31.

- ------------------------------

"7. of implements, machines or their parts, etc.: adjustable to all requirements~ adapted to various purposes, sizes, etc. Frequently 'universal joint', one allowing free movement in any direction of the parts joined. 1676"

Websters says :

"Universal joint. Machinery. Any of various joints or couplings permitting swivelling or turning at any angle within defined limits, as in the ball and sock joint. For power trans-mission the single Hooke's joint and the Cardan joint are widely used, the former transforming a uniform into a variable motion ••• "

The meaning given by Professor Joubert to "universal joint"

was, as already noted, narrower but it seems to me should be

regarded as limited to a particular field of engineering.

It is, in my opinion, correct to describe t~e joint

shown in the drawing as having three axes of rotation, as was

done in the specification, these being lines through the two

axles passing through the stainless-steel cylinder, which may

be regarded as horizontal lines, and a vertical line passing

through the screw attaching the bottom part to the dagger-

board in a way which permitted it to rotate around the ·screw.

It will be noted that the paragraph dealing with particular

embodiments concludes with the words "or such other joint to

enable a propulsion means to be substantially free-floating

in the absence of user control". Other parts of the

specification, for instance the instructions as to method of

use, are in harmony with this.

32.

In my opinion nothing in the specification points to

there having been any intention to depart from the dictionary

and grammatical meaning which has been stated above. On the

contrary, if it were the case that there is any ambiguity in

claim 1 in the respect under consideration, the passages in the

specification which have been mentioned indicate that claim 1

should be given a general meaning rather than confined to being

.a description of the physical nature of the joint.

Conclusion.

The plaintiffs give to the word "joint" a meaning

which excludes a "force closed joint", that is, a joint in which

two parts are kept together by external force applied to one

or both or, perhaps, by friction. This submission is relevant

also to the defence of anticipation. The defendants submit

that if such a meaning is to be given then their joints are

force closed joints because the bottom part is secured in its

socket by friction. However, it seems to me that for the

purpose of determining infringement it is enough to observe

that the defendants' joints are identifiable and separate parts

of their sailboard apparatus and that they do link or fasten

together the mast and the board securely. This is achieved

firstly by a mechanism on the bottom part of the joint by which

it is secured in the socket in the board in which it is placed

by compressing a rubber sleeve which it carries so that this

jams against the wall of the socket. Secondly, as already

mentioned, the downhaul of the sail is lashed to the top part

of the joint and this prevents the mast from moving out of it.

33.

Whether or not the defendants' joints should technically be

considered as coming within the category of force-closed joints,

they are clearly within claim 1.

The defendants submit that while their joints permit

the mast to move out of the vertical attitude, they do not do so

by permitting it to pivot. Firstly, they say that it does not

pivot because there is no pivot or physically i9entifiable axis

of rotation in the joint. However, what has been said

indicates that movement around an imaginary line is enough.

Secondly, it is submitted that if it is enough to pivot around

an imaginary line, the defendants' joints only permit the mast to

pivot around a succession of imaginary lines. As has already

been mentioned, each increment of movement of the mast in a

vertical plane has the effect of moving the axis of rotation by

a microscopic amount to a new position parallel to the previous

one. It is said for·the defendants that movement of this kind

could not possibly have been regarded by persons to whom the

patent was addressed as pivoting. It seems to me that such

persons would have paid no attention to such microscopic

refinements. Within their understanding of the language of

the claim the movement of the mast permitted by the defendants'

joints seems to me to be aptly described as being to pivot.

The defendants submit that in the case of their boards

when used in normal conditions the mast will never pivot in a

vertical plane because conditions of wind and water, and the

weight of the sail and booms, will have the effect that if it is

released by the user it will undergo skewing or slewing, that is,

will not fall in only one vertical plane but along a path in

34.

which every increment of movement is from one vertical plane

into another. There can be no doubt that this is correct.

But it seems to me to be an irrelevant consideration. All that

the patent requires is that the nature of the joint permit the

mast to pivot out of the vertical attitude along a vertical

plane. The defendants' joints undoubtedly permit the mast

to do this. The fact that in practice the mast is highly

unlikely ever to move continuously in the same vertical plane

is irrelevant. Indeed, it is this theoretical capacity

which is the foundation of its ability to undergo skewing or

slewing.

For the foregoing reasons it must be concluded that the

defendants' boards, using .either their rubber or rope joints,

infringe claim 1 of the patent.

CLAIMS 2 to 7.

The defendants concede that if claim 1 is infringed

these claims are also infringed and that no separate point

arises.

CLAIM 8.

The defendants submit that this claim is not in any

event infringed because in the defendants' craft, as well as the

plaintiffs', the body of the sailor and the movement of his

weight is an essential part of the means for changing the

direction of travel of the craft. The mast and sail are not

substantially the sole means.

35.

The plaintiffs submit that :

"Claim 8 is however a claim to an apparatus, and the integer that 'the mast and sail are substantially the sole means for changing the direction of travel' refers to the sole means i~_!h~-~EE~f~~~~~ The claim neither refers to the user, nor to the wind, although in fact both are necessary for any deliberate change in the direction of travel."

In my opinion this submission is correct with the result that

the plaintiffs' boards should be held to infringe claim 8.

CLAIM 9.

The defendants submit that this is not infringed

because in each of their sailboards the pair of booms are not

"arcuately connected athwart" the mast. It is said that

"athwart said mast" does not mean "around said mast" as the

plaintiffs contend. The requirement is that the two booms

must be "connected across the mast in such a way that there is

an arc or arcs of a circle involved in the connection, as in

fig. 1 (ofthepatent)". It is further said that the

"booms of the alleged infringing craft are square across the

front end and square where they are connected across the mast

and no arcs curving or arching are involved in the connection" •.

According to the Oxford Dictionary "arcuate" means

"curved like a bow, arc-shaped, arched ••• Hence Arcuately".

Webs ter s does not inc 1 ude "arched" •

Each of the two booms on the defendants • sailboards

is curved outwardly from the sail in an aerofoil shape: that i~

the curve is greatest adjacent to the mast and flattens out

towards the clew, or rear edge of the sail. Each of the booms

36.

~ - ~---- ~ -- ---- ----

is made of aluminium tubing with a non-slip covering on the

forward section. The two booms are linked together at their

mast end by being inserted into sockets on each side of a rigid

plastic joint. In my opinion the joint itself can neither

be described as straight nor curved. On the leading edge

of the joint is a handle intended for use by the user of the

board when walking around the mast from one side of the board

to the other. The two booms and the joint form a shape which

can be said to be like an arch. Accordingly, in my opinion

the booms can be said to be arcuately connected. \

If the booms

were straight it might be difficult to say this unless one

regarded the shape of a flat arch as arcuate.

In use as part of the defendants' sailboards the boom

is placed so that the mast is against the inside of the peak of

the arch and is lashed to the mast in this position. "Athwart"

is defined in the dictionaries as meaning "across", or "from side

to side". In my opinion, in either of these meanings, the

booms may be said to be connected athwart the mast and, as by

their connection they form the shape of an arch, they may

correctly be described as "arcuately connected".

Accordingly, the defendants • sailboards come within

claim 9.

CLAIM 10.

Introduction. It is to be noted that what is

claimed is "wind-propelled apparatus substantially as hereinbefore

described with reference to the accompanying drawings". Hence,

the question to be decided is whether it can be said that the

37.

--~-~- ---- ---

defendants' sailboards are apparatus substantially as described

in the specification with reference to the drawings. This

question is, of course, one of fact and degree.

The defendants submit that their sailboards do not

come within the claim because they differ from the sailboard to

which the claim refers in three respects.

Firstly, it is submitted that none of the defendants'

craft has the joint shown in figure 2. The respective joints

have already been described. It is said that unless a sail-

board has a three physical pin joint, two in the horizontal and

one in the vertical, it cannot possibly infringe this claim.

The figure 2 joint is an essential part of the claim. No

doctrine of mechanical equivalents can be appealed to as a

matter of law and there is none in fact.

Secondly, it is submitted that none of the defendants'

craft has the booms connected athwart the mast by the system

shown in figure 3 of the drawings, nor are they attached to the

clew end by the system shown at figure 4. The methods of

attachment used by the defendants are an improvement being

virtually the same as those now used by the plaintiffs. There

is no mechanical equivalents in fact involved, nor is the

doctrine of equivalents available in law. The methods of

attachment in the patent are essential integers of the claims.

The specification describes the booms as being connected

together at the spar end, that is the mast end, by a loop of 1"

wide webbed tape encircling the spar through a crescent-shaped

opening in the sail hem. The tapes are secured by fittings to

the outside surface of each boom a little distance bac~ from the

38.

mast. Figure 3 shows that the tape is double, one thickness

passing in front of the mast and the other around the rear of

the mast. Both tapes are held taut by the fittings and the

boom is thus secured to the mast. At its clew or rear end

each boom is provided with outhaul openings and jamb cleats.

The method of holding the booms together at this end and the

sail taut in between them is that an outhaul, a rope, is

threaded from the jamb cleat on one boom, through a reinforced

opening in the sail clew, through the outhaul opening in the

second boom,it is then looped through both outhaul openings

and from there secured in the jamb cleat on the second boom.

From this description it is apparent that each boom is secured

to the other when in use by the tape at the spar end and the

outhaul at the clew end.

By contrast, as already described, each of the two

booms in the defendants' craft is secured to the other by a

rigid plastic joint provided at each end. At the mast end

. the joint is lashed to the mast. At the clew end there are

jamb cleats on either side securing the outhaul which passes

through holes or over pulleys to a reinforced opening in the

sail which can thus be pulled taut between the two booms.

Thirdly, the defendants submit that to infringe

claim 10 the mast must be stepped on the top of the dagger-board.

In all of the defendants' boards, and indeed on the plaintiffs'

boards, the mast step is in the surface of the board itself

ahead of the dagger-board.

Two advantages are claimed for this arrangement.

Firstly, the dagger-board may be raised or completely removed

39.

without removing the mast. This is convenient when beaching

the board or sailing in shallow water. It enables different

types of dagger-boards to be inserted for sailing in different

conditions. It enables the board to be withdrawn or raised

to improve performance when sailing, for instance, before the

wind. There is no dispute as to these advantages.

Secondly, the sailboard is much better "balanced" and

easier to sail. The defendants claim that the board as

illustrated would in fact be unsailable. A great deal of

evidence has been given on this issue which includes the

evidence of the experts, evidence of sailing trials with sail

boards having the mast attached to the top of the dagger-board

and films showing these trials.

The theoretical considerations are as follows. The

force of the wind actipg on a sail can be regarded as acting

through a point on the sail called the centre.of effort. Except

when the wind is directly behind a craft the force through the

centre of effort tends to move the boat sideways as well as

forward. The hull and the keel or dagger-board creates a

resistance to such sideways movement which may be considered to

have a central point called the centre of resistance. If the

centre of effort is ahead of the centre of resistance the bow of

the craft will tend to turn away from the direction from which

the wind is blowing. With a sailboard the centre of effort

may be moved forward or back by moving the mast in these

directions. It is by this means that the craft ·may be caused

to change direction. Similar considerations apply to any

other wind-propelled apparatus coming within the claims.

4 0.

Professor Joubert gave evidenc·e that in the case of the

sailboard illustrated in the patent, because the mast is mounted

on the dagger-board, the centre of effort would always be behind

the centre of resistance which would be at some point on the

dagger-board below the hull. Hence, with the mast vertical,

the craft would turn into the wind. In order to sail it it

would be necessary to tilt the mast forward to an inconvenient

degree. This would require the rider to move himself forward

on the board which would have the effect of lowering the nose

of the board in the water and make it impossible to sail.

I think that it is correct to say that mounting the mast

on the dagger-board would have a tendency to produce such a

result. But, on the whole of the evidence, it cannot, in

my opinion, be concluded that so doing would cause a board to be

unsailable. On the other hand it seems to me that it

should be concluded that placing the mast-step ahead of the

dagger-board will necessarily produce a sailboard which is easier

and more convenient to sail than one in which the mast is attached

to the top of the dagger-board.

Law.

Counsel for the parties have referred to a number of

decisions relevant to the interpretation and infringement of this

claim. Claims of this kind were upheld as valid in Raleigh Cycle

eo. Limited -v- H. Miller & eo. Limited, (1948) 65 RPC 141, a

decision of the House of Lords. The patent in question related

to an electric generator for a bicycle. By majority it was

held that a claim for "an electric generator for a cycle,

constructed, and arranged substantially as herein described, with

41.

reference to and as illustrated in the accompanying drawings"

was sufficiently narrow to be a valid claim. One of the

majority, Lord Morton, made the following preliminary observation:

"I now come to Claim 5, and before examining its wording I desire to make some preliminary observations. For many years it has been a common practice to insert, as the last claim in a patent specification, a claim on the same lines as Claim 5 in the present case. I think that the reason why such a claim has been inserted, in the present case and in countless other cases, is as follows. The patentee fears that his earlier claims may be held invalid, because they cover too wide an area or fail sufficiently and clearly to ascertain the scope of the monopoly claimed. He reasons as follows: 'If I have made a patentable invention and have described the preferred embodiment of my invention clearly and accurately, and without any insufficiency in the directions given, I must surely be entitled to protection for that preferred embodiment, and that protection may fairly extend to cover anything which is substantially the same as the preferred embodiment.• This reasoning seems sound to me ••• " (157)

His Lordship agreed with the finding of infringement made by

the trial Judge and observed that it was open to the appellants

to prove, if they could, that the defendant's generator, although

omitting one of the features mentioned in the claim, was "an

absolute mechanical equivalent of the article described in the

specification" and was only colourably different from that

·article. The other members of the majority agreed with this

conclusion on infringement.

De ere & eo. -v- Harr ison McGregor & Guest Limited I ( 1965)

RPC 461 was an action for infringement of a patent relating to a

silage cutting machine, the claim in question being in the same·

4 2.

form as claim 10. In the House of Lords Lord Reid said

"That case appears to me to be ample authority for holding this patent valid, but it also shows that a claim of this kind cannot have a wide scope. I do not think that Lord Morton intended to lay down a hard and fast rule by his references to differences being colourable or devoid of significance and to an absolute mechanical equivalent, but one cannot go much further without seriously impairing the principle that by reading the claim others must be able to know the precise limits of the monopoly. The same idea was expressed by Parker,J., in Marconi v. British Radio Telegraph (1911) 28 R.P.C. 181: 'it is a well-known rule of patent law that no one who borrows the substance of a patented invention can escape the consequences of infringement by making immaterial variations~" (476)

In the specification the cutting blades were connected to a

revolving shaft by pivots. In the defendant's machine they

were connected each by a single chain link and hence had a

greater freedom of movement. His Lordship observed that in

a question of infringement one must begin by construing the

claim. He concluded that the means of attaching the

blades to the revolving shaft was clearly an essential integer

because "without a flexible connection the machinewould be

useless" (477). Accordingly, the claim had to be regarded as

limited to a pivot. He said :

"So if the claim in the present case must be regarded as limited to a pivot, the fact that a different form of linkage, e.q. a chain link, produces the same result would be irrelevant.. The claim would not extend to such a linkage." (477)

He had already held that because a chain link allowed movement

in any direction it was a different kind of linkage and so could

"hardly be said to be an absolute mechanical equivalent" ( 4 76) •

43.

• His Lordship concluded :

"One must remember that the claim cannot simply be construed with reference to the alleged infringe-ment. It must have the same mean-ing now as it had when it was published, and if it is not limited to something that can properly be called a pivot, it must I think extend to cover any form of flexible linkage which would serve the purpose. And it must cover such linkage even if it produces a better result than the pivot •. I do not think that on the question of construction it is relevant that it so happens that the results with the chain link are similar to the result with the pivot. I cannot read the v~gue word 'substantially' as sufficient to overcome the fact that nothing but a pivot is mentioned or contemplated in the specification, or as sufficient to extend the scope of this claim so. that it can be held to cover the respondents' device. I would therefore dismiss the appeal." (Lines 39-49).

Lord Morris said, in relation to the claim :

"The skilled addressee would understand that the device for which the claim is made is a device which is constructed as described and as illustrated subject only to such variations of construction as a skilled man would consider to be minor ones." (478)

He went on to say :

"The words in the specification to which I have referred are essential and specific parts of the definition. No difficulty arises as to the interpretation of the words. Their meaning is clear. The drawings are also clear. This being so, it seems to me that it has to be decided as a question of fact and degree whether the machine manufactured and offered for sale by the respondents differs from the machine denoted by claim 7. If it differs, then it has to be considered whether any differences are minor ones which

44.

0

"lack substance and whether notwithstanding differences the 'pith and marrow' of the invention covered by claim 7 is being copied. (See Van der Lely N.V. v. Bamfords Ltd. (1963) R.P.C. 61.)

I need only refer to one difference which the respondents' machine undoubtedly manifests. Its cutters are not welded to a strap member as shown in the specification, but are carried upon a two linked chain. As a consequence, instead of allowing for movement only in one plane there can be lateral movement. There can be a greater freedom of movement if the cutters meet some 'resisting members in the field'. The result according to one witness is that a measure of flexibility is give~: there can be a certain freedom to twist. This may give an additional factor of safety. To justify a finding of infringement this difference would have to be regarded as being unimportant and immaterial and of no consequence. I cannot take that view, nor the view that the 'pith and marrow' of the invention is being copied. The claim covers a stated 'construction, arrangement and combination' of parts. The a~cuate blade is mounted and it pivots in a particular way. I cannot regard the different and substituted feature of the respondents' machine as being a mechanical equivalent, or as representing a mere 'colourable departure'. For this reason (and without finding it necessary to express a view as to any other suggested differences) I would dismiss the appeal." (478-9)

General Steel Industries Inc. -v- State of New South

Wales, (1967) 40 ALJR 464, was an application for a declaration of

infringement under s.126(1) of the Act. Claim 10 of the patent

was in the same form as that now under consideration.

who was the trial Judge, said :

"Claim 10 poses, so it seems to me, the same problem that arose in Raleigh Cycle Co. Ltd. v. H. Miller & Co. Ltd., (1948) 1 All E.R.308.

45.

Menzies,J,

"Having regard to the decision of· the House of Lords in that case, I have come to the conclusion that I should treat claim 10 as a valid claim for the invention described in the body of the specification but limited to the particular embodiment illustrated in the drawings." (467)

His conclusion as to this claim was that it had been infringed

because what minor differences there were between the defendant's

article and that illustrated in the drawings forming part of the

specification were not significant.

Conclusions.

I turn now to the first question· which is, what

construction should be put on the claim in the three respects

relied upon by the defendants.

The description in the specification with reference to

the accompanying drawings commences by stating what each of the

figures depict~ It then goes on to deal in detail with each

of them. As to figure 2 the description commences· "the spar is

connected to the dagger-board platform by means of a three axis

universal joint". It goes on to describe in detail the

construction of that joint, taking some twenty-two lines to do so.

There is nothing in the description to suggest that any other kind

of joint might be substituted. However, the description

referring to the drawings is followed by a statement about

modifications and variations which has already been quoted but

which is directed to those which might be effected to adapt the

apparatus "for the expediencies of particular applications".

Approaching the question of construction as one to be

decided by reference only to the claim itself it seems to me to

46.

0

be clear that it is for the particular embodinent of the invention

described by reference to the drawings and that a three axis

universal joint is an essential part of that particular

embodiment. The precise details of the structure of the joint ~-=--c=::------------~------~~-~---~---- ~~

are not, I think, essential features.

The plaintiffs' present joint, which is constructed

somewhat differently and makes use of a plastic knuckle instead

~of a portion of stainless steel tube to form the link between

the top and bottom parts, clearly comes within the claim.

On the other hand, the defendants' jo~nts are quite different

in kind although they are universal joints which permit the mast

to move in the same way as the figure 2 joint. None of the

defendants' joints can, in my opinion, be regarded as an absolute

mechanical equivalent of the figure 2 joint.

The defendants seek to distinguish their joints from that

in claim 10 by pointing ·to the fact that each of them permits the

mast to rotate around its longitudinal axis whatever position it is

in in relation to the board while the figure 2 joint does not.

This is an important practical feature of their joint because

if the mast and sail are lying in the water with the sail up-wind

of the mast and the wind is strong, the boom and sail can be

lifted from the water sufficiently to enable the wind to catch

the sail and flip it over on to the other side of the mast.

This makes it easier in some circumstances to get the craft upright.

However, this feature of the defendants' joints does not, in my

opinion, assist in preventing infringement. If the joints were

to be regarded as infringing without this feature, the addition of

it, even if it might be regarded as inventive, would not avoid

infringenent.

47.

..

I

~

As to the connection of the booms athwart the mast, the

description given above of this connection is taken from that in

the specification. Similarly with the description of· the

connection of the booms at the clew end. It seems to rre that

it is an essential feature of the claim that the connections be

of this kind. I do not think that the defendants' connections

come within the claim. They produce a pair of booms which are

permanently connected by plastic joints at either end. They do

not rely, as is done in the claim, upon the connection being

effected by means which are also employed to attach the boom to

the mast or the sail to the clew end. I do not think that

any of the plastic joints used by the defendants can be regarded

as the absolute mechanical equivalent of the methods of

attachment described in the claim.

As to the location of the joint on the top of the dagger-

board, the specification, referring to figure 1, which is an

overall view of the sailingboard, says that the top portion of

the dagger-board extends to provide a platform for "pivotal

attachment of the spar". The description relating to figure 2

states that the lower clevis of the joint is secured to the

dagger-board. As a matter of construction it seems to rre to be

an essential feature of the particular embodiment of the invention

for which the claim is made that the mast is attached to the top

of the dagger-board. Accordingly, because the defendants'

craft have the mast stepped ahead of the dagger-board, they do ·--·-------·--·---

not come within the claim. This particular variation seems to

me to be one of substance and one which achieves improved

performance and cannot be described as inessential or adopted , ______ _ merely for the purpose of avoiding infringement.

---·--~

48.

.,

Accordingly, it is to be concluded that there has been

no infringement of claim 10.

VALIDITY

Summary.

The defendants' case is that, whatever construction is

put on the claims, each of them is invalid on the grounds

mentioned in pars. (e) and (g) of s.100(1) of the Patents Act,

namely, that the invention, so far as claimed, was

(e) obvious and did not involve any inventive

step having regard to what was known or

used in Australia on or before the priority

date of that claim; and

(g) was not novel in Australia on the priority

date of that claim.

The defendants also rely on the following further

grounds mentioned in the section: par.(c), that the complete

specification does not comply with the requirements of s.40 of

the Act; par. (d), that the invention as claimed is not an

invention within the meaning of the Act; and par.(h), that

it is not useful.

On the objection of lack of novelty the defendants rely

upon common general knowledge at the priority date and also

upon a number of instances of prior publication and use. The

principal publication is an article by s. N. Darby entitled

"Sailboarding: Exciting new water sport" which appeared in

"Popular Science Monthly" dated August 1965 and in an Amateur

4 9.

• Yacht Research Association Publication No. 58 dated

October 1966 entitled "Practical Hydrofoils". The other

publications relate principally to wishbone rigs.

The instances of use in public relied upon are of

"home made" sailing craft, namely: by Mr. Pearson at Hastings

on the North Coast of New South Wales and by Messrs. Eastaugh,

George and Morris, in Western Australia in or near Perth.

An additional prior use is relied upon only on the ground of

common general knowledge and obviousness, namely, that by Mr.

Douglas at Brighton.

On the objection of obviousness, the defendants rely

upon common general knowledge at the priority date and also

upon each of the instances of prior publication and use already

mentioned.

It is convenient to consider first the various matters ..

relied upon for the defence of lack of novelty and then to

consider obviousness and then the other grounds of invalidity.

LACK OF NOVELTY.

Introduction.

The first question is, of course, what interpretation

is to be put upon each of the claims. Most of the points of

construction have already been dealt with but other points

remain which it is convenient to consider in association with

the particular prior publication or use which gives rise to

them.

The defendants submit that, accepting the construction

already given to the claims, each of the claims is anticipated by

some or all of the instances of prior publication and use in

public mentioned above.

so.

..

• Law.

The general rule is stated in Patents for Inventions,

Blanco White, 4th Edn. p.4-102, as follows :

"The test for lack of novelty is essentially the same as the test for infringement; that is to say, a prior use will invalidate a claim (subject to the matters discussed in pars.4-ll et seq.) if it was such that it would infringe that claim if carried out after the grant of the patent concerned; while a prior disclosure will invalidate if it contains a clear description of, or clear instructions to do or make, something that would infringe if carried out after grant."

In Meyers Taylor Pty. Limited -v- Vicarr Industries Limited,

(1977) 137 CLR 228 at 235, Aicken, J said :

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the·alleged anticipation would, if the patent were valid, constitute an infringement."

For this reason, the test is sometimes referred to as the

reverse infringement test.

None of the prior uses or disclosures relied upon by

the defendants include all the elements in the various claims

of the patent. For instance, the plaintiffs submit that the

Darby board does not include a joint extending between the mast

and the body as specified in claim 1. In these instances the

defendants rely upon what is termed the doctrine in Griffin -v-

Isaacs, (1942) 12 AOJP p.739, as stated by Dixon, J at 740.

In that case the grant of a patent for a method of constructing

trouser tops was opposed on the ground that it was not noveL

Reliance was placed upon a previous design which, however,

differed in detail from that claimed. Dixon, J said :

51.

"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things, considered as inventions, is the same, it is, I thinkt impossible to treat the differences as giving novelty. It may be true that in neatness, ease of adjustment and commercial attractiveness the particular publication, relied upon in the present case, is inferior to the applicant's arrangement, but, notwithstanding some misgivings caused by this fact, I think, that when the principle of the two things is con~idered closely the differences which the applicant's device exhibits are not such as to remove it from the objection of want of novelty." (740)

McTiernan, J s mply said that he did not think that the latter

method of manufacture was substantially different to the former.

Starke, J said, at 741

"But .the question is what advance did the appellant make upon the opponent's trouser top? What addition did he make to the stock of public knowledge? ••• A development which any competent workman in the trade might have made had he needed it is not an invention and is wanting in novelty as well as in subject matter.

Nothing is disclosed that is not already known to-or well within the range of knowledge of competent workmen in the trade of manufacturing trousers." (741)

After a review of the evidence Latham, CJ expressed the

conclusion that the applicants' invention had "in substance"

previously been disclosed to the public by the earlier method

of manufacture (743).

52.

In Hume Pipe Company (Australia) Limited -v- Monier

Industries Limited, (1943) 13 AOJP 575, also an appeal from the

·commissioner for Patents, Dixon, J stated his views in

different terms. The question there was whether a claim

for a machine for the manufacture of concrete pipes had been

anticipated by an earlier machine. His Honour said, at 578

"It is evident I think, that the applicant's combination discloses a clear mechanical difference of operation and construction. It may be doubted whether the variations exhibit the quality of inventiveness, but this question is not one that is-directly raised by a plea of want of novelty. It is true that it sometimes indirectly arises because where the invention claimed cannot be distinguished from what was already in the possession of the public except by differentiae which contributes nothing to the result or to the means for producing it or clearly involve no ingenuity or inventive step the plea of want of novelty must"be considered as established in substance." (578)

He referred to a number of previous decisions of the Court,

including Griffin -v- Isaacs. May -v- Higgins, (1916)

21 CLR 119 was an appeal from the Commissioner of Patents.

The application had been for a patent for a starting device for

horse races. The application was supported as a combination

and opposed on the ground that it was not novel, having regard

to an earlier machine. The applicant relied upon the presence

of a new feature in the combination. Isaacs, J said, at 123 :

53.

"It appears to me that it is a mere improvement of one previously existing integer. It is not a new integer giving better results, nor the substitution of a totally different integer, the presence of which is such as to make the whole machine an essentially different machine, a new unit. It is, I think, at best an improvement upon a prior integer not altering the essential character of the machine~" (123)

Gum -v- Stevens, (1923) 33 CLR 267 was an appeal from the

Commissioner of Patents in respect of an application for a patent

for an improved lubricating device for vehicles which had been

opposed on the ground of want of novelty. The application

was supported on the ground that the applicants had substituted

a valve or nipple for a cup in the previous device. Starke, .J

said

"The substitution ••• was therefore an obvious method of carrying out the same object, and by means of a device perfectly well known for lubricating purposes. There is certain~y no subject matter in the eo-called invention of the applicants." (272)

He went on to say that there was no very clear line of demarqation

between subject matter and novelty and to conclude that the

invention was lacking in novelty. Isaacs, J quoted with

approval a statement from the judgment of the Court in Tatham -v-

Dania, (1869) Griffin's Pat.Cas. 213 as follows

"If a patentee would succeed it is necessary for him to show not merely newness in the sense of doing a thing which has not been done before, but that he must show newness in the shape

of ~£Y~!!~-~~-E~£~~£i~~-~-!hi~~-~hi£h ~~g~i~~~-~£~~-~~~~!!2~-2!-~i~~-!h~! ££~!~-E~2£~f!~-~~-£~!!~~-i~Y~~!i2~~: (270)

54.

This would seem to be the fundamental principle underlying

all the decisions on the subject under discussion. ·see

Fabrique Suisse de Crayons -v- Commissioner, (1946) 16 AOJP 2811.

There have been no reported decisions in which the

doctrine in Griffin -v- Isaacs has been applied or considered

since Hume Pipe Company in 1943, except that of Stephen, J in

Washex Machinery Corporation -v- Roy Burton & Co., (1975) 49 ALJR

12. There it was contended that the patent in suit, for an

industrial dry cleaning or washing machine, had been anticipated

by two earlier inventions. As to one of these his Honour said:

" .•• there is what I regard as a significant difference preventing anticipation, namely that in this machine the drum is mounted on an inclined axis whereas in the patent in suit the axis is stated to be substantially horizontal. I regard this as a very marked distinction affecting the entire design criteria and in that respect distinguishable from the case of Griffin v. Isaacs." (17)

Senior counsel for the defendants attributed the lack

of recent authority on this topic to the following circumstances.

It was not until 1952 that objection could be made to a patent

application on the ground of obviousness. Before then the

doctrine in Griffin -v- Isaacs was, accordingly, of great

practical importance. In 1957, in HPM Industries Pty. Limited

-v- Gerrard Industries Limited, 98 CLR 424, Williams, J,

following two English decisions, one of the House of Lords and

the other of the Court of Appeal, expressed the view that in

s.100{e) of the Act, (which relates to obviousness) the words

55.

"known or used" appeared "to embrace more than what had become

commonly known or used, or in other words more than the QOmmon

general knowledge of a skilled craftsman in the particular art"

on the priority date and included "everything disclosed by the

literature on the subject (including prior specifications)"

(437-8). Until 1980 this view was accepted as correct and

during this period an objection of obviousness might be

supported by any prior publication, whether or not it might have

been within the common general knowledge of the hypothetical

skilled craftsman. Accordingly, there was no practical

distinction between objections on the grounds of lack of

novelty and of obviousness. However, in 1980 the view was

shown to be wrong. In Minnesota Mining & Manufacturing eo.

-v- Beiersdorf (Australia) Limited, 144 CLR 253, Aicken, J,

with whom the other members of the Court agreed, held that an

objection on the ground of obviousness could not be supported

by prior published patent.specifications "without evidence that

they were part of common general knowledge at that time".

It is said that since then the importance of the doctrine in

Griffin -v- Isaacs has re-emerged because it permits an objection

of lack of novelty to be supported by any prior publication

whether or not part of common general knowledge.

The plaintiffs do not contest the existence of the

doctrine but submit that it merely enables a court to treat as

not novel something which has only trivial differences from

what has been published previously. They submit that the

doctrine does not extend to cover the instances to which the

56.

defendants seek to apply it. These submissions are supported

by the misgivings expressed by Dixon, J in the passage quoted from

Griffin -v- Isaacs and by the terms in which the other members of

the court expressed their opinions. In the various cases to

which Dixon, J referred, the step required to be taken from the

material previously published to reach the invention claimed, was

simple and obvious, although in none of the cases could it be

said, in my opinion, that the differences were merely trivial.

But this does not, I think, affect the nature of the principle.

Although the defendants rely on what they term "the

doctrine" in Griffin -v- Isaacs, and that expression has been

used in these reasons, the principles on which the various cases

relied upon were decided can hardly be regarded as worked out

to such an extent as to justify reference to them as a doctrine.

They may be regarded as a series of instances in which, having

regard to the evidence before the Court, it was held that there

were no substantial differences between the previously published

material and the invention claimed or no differences which

required any ingenuity or inventive step and hence the invention

claimed could not be regarded as novel.

Darby

The Darby article is headed "Sailboarding: Exciting new

water sport". It states :

"Learning to handle a sailboard is quite a change, even for an experienced paddle-board sailor, because you have no rudder and must steer with the sail. You have also to learn to handle what is really a square rigged ship rather than a fore and aft Marconi rig like that on small sail boats you have known."

57.

The craft is described by photographs and plans are provided for

building it.

The hull described is rectangular, measuring 10' x 3'

with a maximum depth of 2~" about two-thirds of the way back from

the bow and with straight sides. Extending forward of and

slightly to the rear of the part of greatest depth and slightly

raised above the deck is a narrow wooden platform. This

provides a keel trunk in the form of a slot through which the

removable dagger-board keel is inserted and a mast step which

is in the form of a 2" diameter shallow hole in which the heel of

the mast is placed. The sail is diamond-shaped. The points

of the sail are connected to the ends of the mast and of the

cross-spar in a way which tensions the sail and causes both the

mast and the cross-spar to take up the shape of a bow.

The method of sailing is described by photographs and

diagrams. The mast and spar are kept on the lee-side of the

sail. Their bowed shape provides some space for the sail to

take up a curved shape in response to the wind. The rider

stands i.n front of the mast and with his back to it. The ·mast

may be secured to the sailboard by a lanyard. The text of the

article describes how to steer by the sail and to perform various

manoeuvres. The point is made that if the wind becomes too

strong the sail can be allowed to fall into the water.

The Darby sailboard thus embodies the free sail concept

which is the inventive concept of the patent. There are three

important differences. It employs a sail using a square-rig

principle instead of a triangular sail such as is described in

figure 2 of the patent and which is like the mainsail of a Marconi

(fore and aft) rig, the kind commonly used on sailing boats.

Secondly, and as a consequence of this difference, the cross-

58.

spar, which corresponds to the boom in the patent, is on one

side of the sail only. Thirdly, the mast is not coupled

to the body by means of a joint extending between the mast and

the body.

terms :

However, there is a note on the plans in these

"More complex swivel step for advanced riders not shown."

The article states that the author was producing a limited

number of sailboards and invites enquiries. There has been

evidence about what interpretation would have been put on the

above note when the article appeared,.

The defendants submit that the Darby article

anticipated all the claims of the patent invoking, where

necessary, the principle in Griffin -v- Isaacs.

The plaintiffs submit that claim 1 has novelty over

the Darby design because this does not disclose a mast that is .

"pivotably coupled' to the body by means of a joint extending

between the mast and the body .•• " and because there are no

"means for extending the sail laterally from the mast".

It is convenient first to consider the drawing and

photographs without reference to the note about a "more complex

swivel joint". It seems to me that the mast and hull of

the Darby craft are coupled in the sense that they are connected

together in some way when the heel of the mast is placed in the

mast step and its movement restricted by the walls of the hole.

I do not think that, as the plaintiffs' submit, the word

"coupled" in the context of claim 1 means joined together to

such an extent that the mast cannot be separated from the hull

in whatever direction it is moved. It seems to me to be

59.

sufficient that the mast and the hull be connected together

in a way which restrains the movement of each in relation to

the other sufficiently to serve the purpose of providing wind

propulsion. The joint between the mast and the hull is a

forced closed joint in the sense that the two parts are kept

together and their relative movement restricted in the way

mentioned by the application of force derived from the weight

of the mast and sail, a downward force applied by the rider,

and perhaps a resultant downward force from the effect of the

wind on the sail. However, in my opinion the arrangement

used cannot be properly described as coupling the mast to the

hull "by means of a joint extending between the mast and the

body". In this respect the claim refers to a part of the

apparatus which is distinct from the mast and from the. body,

although it might, perhaps, be integral with one or both of

them. For this reaso? only the Darby board does not come

within this part of claim 1.

It is thus necessary to consider what would have been

conveyed by the note as to a "more complex swivel step for

advanced riders". In this and other respects the

defendants submit that evidence given by Professor Joubert is

relevant on the question of what the hypothetical skilled

person in the trade would have inferred on reading the

article. He said that these words would nave conveyed to

him: "Perhaps a ball and socket type joint" (T.167). In

cross-examination, when asked what led him to that inference,

he answered :

60.

"Perhaps that is what he was getting at, yes. It might equally have been say the sort of swivel you get in your fishing line where you have two eyes connected and one of them can swivel and that would have the same function as the ball and socket and remove the difficulty of requiring forced closure." (T.l92)

Later, he said that he had in mind a "spherical joint", by which

he meant, one giving universal movement. In the course of

his evidence he gave examples of such joints found in the usual

rigging and equipment of sailing craft. Mr. Hood, a well

known and highly qualified naval architect who was called for

• the plaintiffs, said that the words "more complex swivel step"

meant, to him, a step which would rotate (by which he meant

rotate about a vertical axis) but that this would not be of any

advantage to a rider.

The question is, of course, what was the meaning of

the words used by Darby, not what devices the hypothetical

skilled person in the· trade might be prompted to think of by

the words. The verb "swivel" ordinarily means to turn

about one axis only. If the expression used by Darby had

been "swivel step" the literal meaning conveyed would, I think,

have been of the nature suggested by Mr. Hood. However,

the expression is "more complex swivel step" and this, it

seems to me, was intended to refer to something more complex

than Mr. Hood suggested. The context suggests to me a

socket in which the heel of the mast might be placed which was

capable of rotating about a vertical and at least one

horizontal axis. But there is no evidence to support such

an inference and it should be put to one side, a step which

61.

1 • exhibit 23 shows to be right. But, whatever meaning is

given to the expression, it seems probable that it would have

resulted in something which might be described as a joint

extending between the mast and the hull which coupled them

together in the sense mentioned above.

The plaintiffs submit that, as a matter of law, the

language of the note is not sufficiently precise to provide any

anticipation. They rely upon a number of decisions which

emphasise the importance of the prior publication containing

clear details or directions which, for purposes of practical •

utility, are equal to those given by the patent: Olin

Corporation -v- Super Cartridge Co., (1977) 51 ALJR 525, at

536; General Tyre & Rubber Co. -v- Firestone Tyre & Rubber Co.

Limited, (1972) RPC 457, at 485-6, a decision of the English

Court of Appeal. It seems to me that in the light of

these decisions it should not be concluded that the note in

question results in an anticipation of that part of claim 1

under discussion.

However, it does seem to me that, having regard to

the evidence of Professor Joubert and other evidence relating

to swivels and joints in use on sailing craft at the time and

the concession that each of the integers of the various claims

were old and that only the combination was claimed to be novel,

the Darby craft should be regarded as an anticipation of this

part of claim 1 because the addition of a joint coming within

that claim would not involve any ingenuity or inventive step

within the doctrine in Griffin -v- Isaacs.

In the Darby rig the sail is attached to the top and

bottom of the mast and is extended to either side of it by the

62.

cross spar, and has the shape of a diamond kite standing on

the point which would normally be the top. The sail is thus

extended to either side of the mast. The plaintiffs submit,

however, that such an arrangement cannot accurately be

described as providing, within the meaning of the claim "means

for extending the sail laterally from the mast". It is said

that these words include only means which extend the sail to one

side of the mast, that is, that the word "from" indicates that

one side of the sail is along the mast. In my opinion the

words should not be so restricted and, taking them literally,

apply to the Darby rig. In this rig the sail is attached

to the mast and means are provided to extend it laterally

from the mast on both sides.

Accordingly, Darby provides an anticipation of

claim 1 of the patent.

The pla~ntiffs submit that claim 3 was not

anticipated because the Darby rig does not include "a boom

laterally disposed on (the) mast to hold (the) sail taut" in

that the cross spar cannot be described as a boom. The

dictionary meaning of this word is "a long pole or spar used

to extend the foot of certain sails 11 (Macquarie). This

accords with the technical evidence. In my opinion the

cross spar cannot properly be described as a boom. The

craft, therefore, did not anticipate claim 3.

The plaintiffs submit that claims 4 and 9 were not

anticipated, in that the Darby craft did not include "means

adapted to enable (the) user to grasp either side of (the)

sail" nor did it include a "boom (comprising) a pair of boom

63.

., •

members arcuately connected athwart (the) mast and securing

(the) sail there between:'. Clearly, the Darby rig did

not come within these claims. But the defendants submit

that it would have been obvious to the hypothetical skilled

person in the trade at the time that it would be advantageous

to add these features and that to do so would not have involved

any ingenuity or inventive step. Accordingly, it is said-

that the Darby article was an anticipation in these respects

within the doctrine of Griffin -v- Isaacs.

extends, of course, to claim 3 as ~ell.

This submission

The defendants rely on the evidence in this respect of

Professor Joubert and also upon the concession that each of the

integers of the claims were well known at the time and that the

inventive idea was the combination and on the evidence dealing

with common general knowledge in relation to such matters as

the wishbone boom and the various joints used in sailing

equipment. Professor Joubert was asked whether, if he had

read the article at the time it was published, as an

experienced sailor it would have occurred to him that there

would be any difficulty in sailing the craft. He said that

to stand on the lee-side of the sail with his back to it

was a very awkward way of arranging the juxtaposition of the

operator and the sail. When asked what remedy would have

occurred to him at that time he responded "That, of course,

assumes I have great wisdom" (T.168). He went on to say

that it would have been obvious,from his experience as a sailor,

that the operator was standing in the wrong position and that

64.

it might have occurred to him that he should be on the other

side of the sail facing it. He expanded on this by saying

"Q. Yes, that was the first question. What is the answer to that? A. Well, I do have to say that whenever something doesn't work that I have been associated with I always tried to reason out why it isn't working and look at all the forces involved and the reasons for it not working. So if you put me into this hypothetical position where I have got this device, I can say quite honestly - and of course I always try to be honest - that I would have tried to reason why it was not working. So I think there is a good probability that I would have come up with the suggestion that I needed to stand on the other side. I can't say with 100% certainty that I would have done that but I think there is a good probability of it.

Q. Can you say why, as a probability~

you would have come to that conclusion? A. Because I have at times, just as a matter of balance on my sailing canoe,

, saixed standing up, hanging onto sheets, even at times just hanging on to the boom and relative to all the forces and moments that are involved one has to be standing in the right position and there is only one right position and it is obvious that Darby is standing in the wrong position." (T.l68)

Professor Joubert was then asked whether, if he had read the

article at the time, he would have regarded the rig as

described as ideal. He answered that he would not have done

so. He then gave this evidence

"Q. Would some other rig have occurred to you as better? A. Well, conventional rigs available at the time were fore and aft rigs and they were well tried and well proven.

Q. Are you saying that that is what would have occurred to you? A. Yes." (T.l69)

65.

' Later, he gave this evidence :

"Q. Can I ask you whether, if you had decided to use a conventional fore and aft rig on Darby, would you have considered that there should be any change to the boom or spar arrangement shown in Darby? A. I would have considered that, yes.

Q. What change would you have so considered? A. The problem with the Darby horizontally arranged spar for stretching the sail laterally is that on one tack the sail would not have had a proper aerodynamic shape because the horizontal spar or boom, if you want to call it that, would have had the ,sail forced against it because of the wind being on the side opposite to the boom. So the sail could not take its proper aerodynamic shape, so some arrangement would have needed to have been made to overcome this poor aerodynamic situation.

Q. At that time, that is to say, after you had read the Darby article, what arrangement would have occurred to you? A. Well, I believe there would have been a high probability, I would have thought, of a wishbone boom. I cannot say with absolute certainty but I think it is a strong possibility.

Q. Why would that have seemed appropriate to you? A. Because the wishbone boom allows the sail to take its proper aerodynamic shape on both tacks. That is to say, with the wind striking the sail from both sides.

Q. Was that a quality or property of the wishbone boom that was then known to you? A. Yes.

Q. Based on your experience, was that a well known property of the wishbone boom arrangement? A. That was one of the advantages of the wishbone boom which, in my opinion, was widely known.

Q. You are speaking of before 1968, are you? A. Yes." (T.253-4)

66.

The above is the only evidence on the question.

Clearly enough, a sailboard rigged in the way which

Professor Joubert suggested would have occurred to him at the

time if he had read the Darby article would have an entirely

different appearance to the craft described in the article.

But it is, I think, important to keep in mind the inventive

1 concept of the patent which, as already stated, is the free

sail concept which is the essential difference between the

patent and conventional vehicles propelled by sail which have

a fixed rig. This concept is clearly conveyed by the patent.

The changes suggested by Professor Joubert therefore have to

be seen as changes in detail which were desirable in order to

provide a more effective embodiment of the inventive concept.

This is not to say, of course, that such changes might not,

in themselves, have involved ingenuity or an inventive step.

The question is whether they would have occurred to the

hypothetical skilled person in the trade who for this purpose

should, I think, be regarded, as in the case of the test for

bviousness, as unimaginative.

It is, of course, important to bear in mind that the

question is what would have occurred to a reader of the article

and not what would have occurred to a person who actually

constructed and attempted to use a Darby sailboard. Such a

sailboard was constructed for the defendants and a film shown

to the court of a trial made of the board in Western Australia.

After sailing the board in accordance with Darby's instructions

the rider then stood on the other side of the sail and sailed it

in the manner of a board of the kind ih question in these

proceedings. Only portion of this part of the film was shown,

6 7.

• the r~mainder, by agreement, was not. The film highlights one

of the problems in deciding the question under discussion. I

have little doubt that the rider of the Darby board would have

been greatly influenced in deciding to stand on the other side of

the mast by his experience of riding ordinary sailboards.

Similarly, it is very difficult for a skilled person in saying

what he might have thought of when the Darby articles were

published to divorce himself entirely from his knowledge of how

successful a craft the sailboard has turned out to be in its

present form. As is emphasised by decisions of the Courts

the question must be determined without any element of hind

sight.

The question must be decided on the evidence before

the Court and in this respect it is important to remember that

the only evidence is that of Professor Joubert and that there

is no conflicting evidence. His evidence must be treated with

some reserve because he is a person who is acknowledged to

have an innovative approach and hence his evidence may not

necessarily reflect the responses of the hypothetical skilled

person in the trade having the necessary lack of imagination.

This reservation makes all the more significant the absence of

any evidence in the plaintiffs' case in reply to the views

·expressed by Professor Joubert. It may be commented that

both sides seem to have spared no effort to have put before

the Court all available evidence. Mr. Hood, who was called

for the plaintiffs, was, of course, just as well qualified as

Professor Joubert to deal with this aspect of the case but he

was not asked to do so.

68.

• In my opinion, Professor Joubert's evidence on this

topic is of such a nature as to indicate that the various steps

which he suggested did not involve any degree of innovation

or ingenuity or invention on his part and, accordingly, can be

regarded as evidence tending to show what was likely to have

been the response of the hypothetical person having the

necessary lack of imagination to the Darby articles. As his

evidence is the only evidence it seems to me that it should

concluded that the various steps necessary to move from a craft

of.the kind described in the Darby ~rticle to a craft coming

claims 3, 4 and 9 were obvious at the time and did not

involve any ingenuity or inventive step. This being so it

is my opinion that these claims were anticipated by the Darby

article under the doctrine in Griffin -v- Isaacs.

The defendants submit that claim 10 was also

anticipated. Reasoning of the same kind leads to the

conclusion that this claim also was anticipated. It merely

involves an embodiment of claims 1 to 9, with no added

inventive elements.

Accordingly, in my opinion, the whole of the claims of

the patent in suit were anticipated by the Darby publication.

Eastaugh.

Evidence in Chief. The alleged prior public use

by Mr. Eastaugh is that to which the parties have devoted most

attention. His evidence-in-chief was given by affidavit and

may be summarised as follows.

69.

• Mr. Eastaugh has been employed since early 1982 by a

firm of yacht brokers, Aquarama of East Fremantle. For

thirty years before that;he was a woolbuyer, operating out of I

Fremantle. He was born in August 1936. From about 1945

he lived with his parents and two younger brothers in Perth at

Neville Road, Dalkeith, about one-quarter of a mile from White

Beach on Freshwater Bay, part of the Swan River. During the

period from about the summer of 1946-47 to about 1949 he, with

the help of his brothers, built a number of galvanised iron

canoes and hill trolleys which he equipped with sails. The

middle brother of the three, Geoffrey, was two years younger

than Mr. Eastaugh, and the youngest, David, was five years

younger. Accordingly, by the end of 1949 Mr. Eastaugh was

thirteen, Geoffrey eleven, and David, eight.

Since that period Mr. Eastaugh has been continuously

involved in sailing, having sailed, owned and built a variety

of craft including a 47 ft. sloop which he and a friend built

and subsequently sailed in a Sydney-Hobart yacht race, a trans-

Tasman race, and in which they circumnavigated Australia.

In 1977 he had a sailmaking business and built a. racing half

tonner which he raced out of the Fremantle Sailing Club and

subsequently he built about ten yachts to this design.

From about the beginning of the period mentioned

Mr. Eastaugh and his brothers made a number of things which

included kites, hill trolleys, (which (in Sydney) are called

"billy-carts"), and galvanised iron canoes. Mr. Eastaugh made

about twenty canoes with the help of his brothers. Such

canoes were common-place and many children made and sailed them

on the Swan River nearby.

70.

•• Mr. Eastaugh used to make sailing boats out of the

canoes. At first he used for the sail large kites which he

made, about 4 ft. in length with a cross-brace of about 3 ft. in

the usual diamond-shape. He simply stood the bottom of the

vertical brace of the kite on the bottom of the canoe wedged

between his toes and used to sail and steer the canoe standing

up and holding the cross-brace of the kite sail. He found

this difficult and the kites did not last long being made of

brown paper. The number of sailing manoeuvres he could use

was very limited. One of the early ~ite sails broke in half

and he tried sailing the canoe with one half of the kite using

the vertical brace as a mast. This was not successful.

Mr. Eastaugh then made and used a spritsail type of

sail, the idea for which he got from some pictures in an old

book that had belonged to his grandfather. He made these

sails from old bedsheets doubled over (to form a triangular

shape), using a broom handle or bean-pole for a mast. He used

a sprit on each side of the sail made out of green flexible

bamboo which he got from a grove nearby. The sail was "loose

luffed" in that the "luff" (the edge along the mast) was secured

to the mast only at the top and bottom of the sail by rreans of

string loops. The bamboo sprits were lashed together with

string at either end with a figure of eight knot. The "clew"

of the sail (the rear-most point of the triangle) was bunched

up and tied with string to the lashing holding the sprits

together.

mast.)

(The sprits thus extended the sail out from the

71.

,,

Initially Mr. Eastaugh used the sail simply by wedging

the mast between his toes and standing up and grasping the mast

and one of the sprits to sail and steer the canoe. He found

that it was too hard to hold the mast in any wind and he tried

wedging the mast between two cross-braces (which extended from

one side of the canoe to the other at the level of the gunwale).

He did not use this method for long because when the wind got

strong the canoe would capsize and he was not able to get the

mast out in time. So, in later canoes, he got rid of the

$econd cross-brace and loosely lasheq the mast to a single

cross brace with string in a figure eight knot.

At some stage he added lee-boards to the canoes

because he found that he could not sail more than 90° to the

wind. He did this because he had seen lee-boards on some

boats in the Swan River. He used two lee-boards, one on

either side of the canoe, each nailed to the outside of the

cano£~ about centre and extending about 12" down into the water.

These made the canoe more stable and easier to sail and he

"could go further into the wind, up to about 45° into the wind".

He still found it very hard to sail the canoes because

there was too much sail. He therefore changed the shape

by omitting cloth out of the top. He made a triangular sail

out of doubled~over bed sheets as before. At first he used

two bamboo booms, one on either side of the sail, near the

bottom of it.

He used to sail these canoes "both in the sitting

position and standing", standing when sailing before or into the

wind but sitting "when going about to allow the sail to swing

72.

~~-------~-- ~~--~·~~-- ~-------

over (his) head". So as to make it easier to manage the sail

he put a second pair of booms on each side further up the mast so

that he "could hold and move the sail from a standing position".

In general, while sailing he "would stand up and have one

hand on the mast and the other on one of the higher booms".

He describes his method of sailing as follows :

"By pivoting the mast aft the canoe would steer further into the wind. By pivoting it forward the canoe would steer away from the wind. I did not have any other means of steering the canoe. I was able to sail downwind, across the wind and to windward, mainly by moving the mast fore and aft and sideways and moving my body weight. On all my sailing canoes the mast could

0 rotate through 360 and be moved out of the vertical in any direction and to any desired extent. I became quite skilled at sailing these boats. The canoes were rather unstable and would capsize in a strong wind or a gust of wind. If ther·e was a gust of strong wind I was able to let go of the mast which would then fall to the water."

Mr. Eastaugh used to sail the canoes off White Beach.

When his youngest brother was with him he only sailed close to the

shore. By himself, or with his other brother, he sailed across

"to the other side of Freshwater Bay". The canoes "were very

crude and very hard to sail when the wind was anything other than

light. They often capsized and (they) would lose the canoe

because it would sink in deep water". However, with the figure

of eight lashing for the mast he did not lose many rigs because

he could pull the mast away from the lashing as the canoe sank.

73.

Drawings illustrating the various stages of the canoes

were exhibited to the affidavit and are now in evidence.

During the same period Mr. Eastaugh and his brothers tried to

make a catamaran-style canoe. He had seen "twin-hulled

sailing boats on the Swan River" and decided to try to make one

using two corrugated iron canoes. He used the same kind of

sailing rig. The bottom of the mast was secured by placing

it in an old tin can nailed in the centre of the wooden deck

joining the two canoes. He stood up and held the mast and sprit

when sailing. He used a wooden paddle tied to the back of the

deck as a rudder. There were two central lee-boards. The

boat was not a success as he was not able to keep the two canoes

together successfully.

evidence.

A drawing was exhibited and is in

Mr. Eastaugh says that after he had made the spritsail

rig for his canoes he "also used that rig on our hill trolleys

in Neville Road". "The sail on the trolley was to get

greater speed and not for steering". Again the mast was

placed in an old tin can nailed to the top of the trolley near

the front. Usually there were two people on the trolley, himself

and one of his brothers •. One person stood up and held the rig

and the other sat down and steered.

is in evidence.

A drawing was exhibited and

The defendants rely on the latest of the sailing canoes

and on the hill trolley as anticipations of claims 1 to 9 as

mentioned above.

74.

Challenge to Credibility. In the course of his

cross-examination Mr. Eastaugh added considerable detail to the

evidence contained in his affidavit.

The plaintiffs directly challenge the credibility and

reliability of critical parts of Mr. Eastaugh's evidence. They

submit that while it is not suggested that he did not make and

sail iron canoes on the Swan River "his evidence as to sailing

them over considerable distances, sailing them to windward,

tacking, and details of his alleged rigs cannot and should not be

accepted". These details include "matters of attaching

mast, number of booms, whether booms were on both sides of the

sail, how the booms were attached to the sail and mast, and

whether the canoe had lee-boards".

The plaintiffs' attack on Mr. Eastaugh's credibility and

reliability is based upon the following submissions:-

(a) there are many inconsistencies and contradictions

in his evidence;

(b) where his evidence can be checked it has been

shown to be false or grossly exaggerated;

(c) parts of his evidence are inherently incredible;

(d) there is no corroboration as might be expected

from members of his family or friends;

(e) his association with Jay and Richard MacFarlane

of Windrush Yachts shows that he is a partial

witness, that company being the defendant in

proceedings for infringement of the patent

which are dormant, pending the result of these

proceedings;

(f) statements previously made by Mr. Eastaugh to

Messrs. Kelly and Dulhunty of the second

plaintiff were inconsistent with his evidence; and

75.

(g) recent experiments of which evidence was

given show that iron canoes are unable to

sail successfully to windward as claimed

by Mr. Eastaugh.

I turn now to the mattGrs relied upon for the above

submissions.

Inconsistencies, Exaggerations, etc. The plaintiffs

have submitted a written schedule of claimed major inconsistencies

to which the defendants have replied with a written schedule of

rebuttals. The inconsistencies and contradictions suggested

are between Mr. Eastaugh's evidence in his affidavit and in his

cross-examination and between different parts of his evidence

given in cross-examination. Many of the instances claimed are

not, in my opinion, inconsistencies or contradictions when due

regard is had to the words used in questions and answers or are

matters which are not of any importance. Others, however,

show either that Mr. Eastaugh had no real recollection of detail

and was relying on reconstruction wpich produced a different

result at different parts of his evidence or that he did not

regard detail as important.

Thus, in his affidavit he said that he sailed his canoes

with the kite sail standing up but said in his cross-examination

that he did not, so far as he could recall, do so. The detail

is not without importance because a sailboard is sailed standing

up and not sitting down. In cross-examination he said that

when he wedged the mast between two cross-braces, as referred

to in his affidavit, it was a tight fit and when it was pointed

76.

out that this would be unlikely if the cross-braces were 2"

apart he said that anything he gave in his affidavit in this

respect was an approximation.

In his affidavit he said that he sailed with his brother

Geoffrey "across to the other side of Freshwater B•ay" but in

cross-e){amination he said that he had not, to his knowledge, taker.

Geoffrey across to the other side of Freshwater Bay. He had

earlier said, in relation to longer trips which he had done on

his own, that he had not taken Geoffrey on such trips but might

have taken him across Karrakatta Bank, which was a shorter

distance, possibly a safer trip, because of the wind direction,

but never further afield than that. Karrakatta Bank is

located in the central part of Freshwater Bay and is separated

from the other side of it by a channel.

In his affidavit Mr. Eastaugh said that he had added

lee-boards to his canoes because he had seen them on some bo"ats

in the Swan River. In cross-examination he was asked to

identify these boats. He described the way in which the boards

were fitted to them and went on to say :

"They were heavy cruisers that mainly use this type of contrivance. They went out once the steel centreboards came in. Naturally the lee-board was much cheaper to make, and during the War, and after the War, when steel was scarce there were a lot of lee-boards around, from heavy cruisers right up to 14 gaff rigs". (T. 99)

His description indicated that the boards were on a pivot an~

attached to either side of the boat and let down to act as a

keel as required.

77.

In cross-examination Mr. George, whose evidence was

that he had used tin canoes and sailed his sailing canoe in

Mosman Bay, which is adjacent to Freshwater Bay, during the same

period as Mr. Eastaugh was using his sailing canoes, said that

he had only seen one yacht of any type in the Swan River before

1951 which had lee-boards on it and that was a copy of a Dutch

bohye. The other witness of the defendants who might have

had some knowledge of the use of lee-boards was Mr. Morris, but

he was not asked any questions about them. In reply the

plaintiffs called a Mr. Cassidy, who was born in 1920 and had

had a continuous experience of sailing on the Swan River from

early boyhood, interrupted only by service in the Navy during

the War years, and had lived in Nedlands near the Eastaugh home.

He said that he had not become aware at any stage between 1945

and 1950 of any sailing craft in the Swan River that had

pivotable lee-boards on the outside of the hull, and he

contradicted the detailed evidence of Mr. Eastaugh as to the

kinds of boats with lee-boards which he claimed to .have seen.

In my opinion this evidence indicates that Mr.

Eastaugh's reply quoted above is unlikely to be true. It

should be regarded as a piece of invention designed to support

the likelihood that he would have used lee-boards on his canoes.

It is puzzling why he should have put such reasons forward

because the other evidence indicates that the use of lee-boards

was an expedient likely to be obvious to any boy aged between

ten and thirteen in Mr. Eastaugh's position at the time.

In his affidavit Mr. Eastaugh said that he "had seen

twin-hulled sailing boa:t.s on the Swan River", giving this as a

78.

- -··-··-~--------

'

----~----------------------------~-

reason why he and his brothers had made a "catamaran-style"

canoe. He described the sketch exhibited as being of a

catamaran and showing a craft with two hulls of the same size.

In cross-examination Mr. Eastaugh identified the twin-hull boa~

to which he referred in his affidavit as being mostly an early

type of catamaran which was more like an out-rigger than a

twin-hulled thing. There were, he said, quite a few of

these during the period 1946-1949 and that towards the end of

1949 they were things which were just coming into the fore.

An affidavit by a Mr. Sherburn was read for the defendants.

He said that during the years 1.947-1950 he regularly sailed

as a member of the Mosman's Junior Sailing Club and during

the first two years of that period regularly saw a sailing

canoe with an out-rigger which sailed out of the Claremont

Yacht Club which was about three miles away. The sailing

canoe had a gaff rig. He did not say that he had seen any

other twin-hulled craft. His affidavit indicates that he

would have had similar opportunities of observing what craft

were on the river, as did Mr. Eastaugh. .In reply Mr. Cassidy

gave evidence for the plaintiffs that catamarans did not

arrive on the Swan River until 1957. He was speaking, of

course, of the twin-hulled craft now known by that name. He

said that before the arrival of catamarans he did not see any

out-rigger type sailing craft on the Swan. In cross-

examination Mr. George said he had not seen any catamarans

before 1957. Mr. Morris was not asked any questions on the

subject.

It is clear from this evidence, in my opinion, that it

is likely that Mr. Eastaugh did see the sailing canoe which

79.

~ Mr. Sherburn saw but it is unlikely that there were, as he

said, 11 quite a few twin-hulled boats in the Swan". Once

again, his evidence in this respect must be regarded as an

esigned to support his stated reason for building

a catamaran-style canoe and as indicating that he was somewhat

~responsible about details.

It was submitted for the plaintiffs that Mr. Eastaugh•s

evidence in his affidavit that he used to sail and steer a

canoe with a kite sail is, on its face, unbelievable. However,

the evidence of Mr. Hood, a naval architect who gave evidence

for the plaintiffs, indicates that a galvanised iron canoe with

a boy in it could be sailed down wind with some limitation on

wind speed based on the strength of a kite of brown paper and

string and probably could be sailed across wind at very low

speed although he doubted whether such a kite would be useful

for steering purposes. In the light of this evidence I do

not think it can be said that this part of Mr. Eastaugh•s

evidence is unbelievable. The plaintiffs also submit that

his evidence about trying sailing a canoe with one half of a

broken kite using the vertical brace as a mast is unbelievable,

having regard to the way in which the kites were constructed,

that is, the brown paper was attached only to the string around

the circumference. It is perhaps surprising that this

attempt was thought worthy of mention in the affidavit but I do

not think that the evidence can be regarded as unbelievable.

In his affidavit Mr. Eastaugh said that he used his

sailing rig on their hill trolleys in Neville Road and that the

sail was to get greater speed and not for steering. In cross-

80.

examination Mr. Eastaugh said that Nev.ille Road ran down hill

and roughly east/west. The evidence is that the prevailing

wind in the mornings at Perth is an easterly and in the after-

noons a south-westerly. He went on, in effect, to say that

the morning breeze assisted the hill trolley down Neville Road

although it was in the lee of a hill, that they did not

necessarily use Neville Road going down into a south-wester

but there were plenty of other roads around the place "that

could be used for sailing along" and that the sail was

sufficient to carry he and one of his brothers in the billy-

' cart along flat ground without anything more than a starting

push. He said that when travelling in the billy-cart

one boy would sit down and steer and the other would stand

behind him holding the sail. It is submitted for the

plaintiffs that all of this evidence is unbelievable and that

in this respect regard should be had to the evidence of Mr. Hood

that a 21-knot wind would give only a force of about 10.6 lbs.

on the sail which clearly could not propel the trolley along

flat ground with two boys on the back.

The affidavit clearly enough means that the sails were

used to get additional speed when travelling down hill, this

being consistent with Mr. Eastaugh's evidence that Neville Road

was not a steep hill. The claim made in cross-examination

that he

trolley is

As such it must be regarded with considerable reserve because

of its obvious relevance to the defendants' claim that the

hill trolley anticipated the claims made by the patent for a

"wind propelled apparatus". It obviously means that he has

81.

' ::;:-, enlarged his since his affidavit was drawn. I do not

think that the evidence is sufficient to enable any conclusion to

be drawn as to whether it is theoretically possible for Mr.

Eastaugh to have sailed a hill trolley as he said. There are

too many unknown factors such as the nature of the wheels, the

bearings, and the surface of the roads. Further, I am not able

to conclude that it is unbelievable that Mr. Eastaugh and his

brothers rode the trolleys in the way in which he said they did.

I do not think that this was beyond the ingenuity and adaptability

of small boys.

The MacFarlanes. The plaintiffs make a number of

submissions based upon Mr. Eastaugh's evidence about his

association with the MacFarlanes, and other material before the

Court. The gist of these is that Mr. Eastaugh had a much closer

association with the MacFarlanes than he was prepared to

concede in his evidence-and that, presumably because of that

association, his evidence "'improved' considerably between

October-November '82 and February '83". The first date is

when he first discussed the matter with the MacFarlanes and

the second when he swore his affidavit. These inferences

from the evidence were not put in terms to Mr. Eastaugh in

cross-examination although the questions put to him clearly

indicated that all main points of his evidence were in contest.

In cross-examination Mr. Eastaugh said that he first

heard that the MacFarlane company had been sued for patent

infringement in October or November 1982 when Jay MacFarlane told

him that the Windsurfer people were suing them for patent rights

and that they were "claiming that they invented a free-standing

82.

' rig". He, Mr. Eastaugh, replied that he could not understand

them being able to do that because "we (meaning himself and his

brothers, apparently) were using free-standing rigs on canoes and

hill trolleys back as long as forty years ago". Mr. MacFarlane

then said to him that he should read an article which was to

appear in the West Australian newspaper and answer it. From

subsequent cross-examination it appeared that this was a reference

to an advertisement which did appear on 17 January 1983. Mr.

Eastaugh resisted the suggestion that the conversation in which

he was asked to respond to the advertisement took place closer

to the time when it appeared. He also said he did not recall

anything else he had mentioned to Mr. MacFarlane.

Mr. Eastaugh's evidence as to how he came to give his

affidavit was as follows. He replied to the advertisement by

telep?oning Mr. Royle of the Patent Attorneys (this was the

request made in the advertisement) • About thirty days later he

met the people concerned in Perth, they being Mr. Royle, Mr. Newton

"and the Queens counsel and his assistant". Following that

visit his affidavit was prepared. He made a set of sketches

which he handed to the lawyers when they arrived. As exhibited

to his affidavit these sketches had been slightly altered by him

by adding detail to show the loose luffing of the sail and the

nature of some of the knots.

When the conversation took place the MacFarlanes had

already received a letter of demand dated 17 May 1982 addressed

to Windrush Yachts from the plaintiffs' solicitors alleging a

breach of the patent and claiming various undertakings. These

were refused and the present plaintiffs commenced proceedings

83.

I

against Windrush Sailboards Pty. Limited in the Suprerre Court of

Western Australia by a writ which was served on 2 June 1982.

Further, by about early October, Owen Hall, an employee of

Windrush Yachts Pty. Limited, had completed the construction of a

sailboard built to the specifications contained in the Darby

article and it had been sailed twice on the Swan by Sandro

Franchina, that company's sales manager.

Also, by October 1982 Mr. Eastaugh had had substantial

acquaintance with sailboards. He had taken sailboard lessons

during the preceding winter. He saicr that as a yacht and ship

broker odd friends had asked him for sailboards and he had gone

and bought them one from whomever he could get the best price.

To his knowledge the MacFarlanes had been involved comrrercially

with sailboards for two years or so and had been one of the sources

from which he obtained sailboards for re-sale. Later· in his

. evidence he said that mainly if he sold boards they did not have

any profit in them and that it was not his "business to make money

out of selling sailboards" and that he did not have an agenc_y to

sell them. He agreed that when he saw Messrs. Kelly and

Dulhunty he told them that he sold a few sailboards for the

MacFarlanes.

It would, I think, be surprising if Mr. Eastaugh and

Jay MacFarlane did not have quite a detailed conversation when the

question of a free-standing rig came up. Even if, as appears,

Mr. MacFarlane did not have a detailed understanding of the issues

involved in the infringement proceedings, it would seem likely

that Mr. Eastaugh would have told him much more about his

84.

• experiences with sailing canoes with a free-standing rig because

his evidence has been given in terms which indicate a close

correspondence in principle in the method of sailing his canoes

and of sailing sailboards. This being so it is to be expected

that Mr. Eastaugh was unable to remember more about the conversat

ion than is mentioned above.

If Mr. Eastaugh is to be accepted that the first mention

of an advertisement was in the initial conversation in October/

November it is surprising that the advertisement appeared so much

later. Of course, it is possible that some decision was made

to defer publication of it but no evidence has been given to this

effect. If Mr. Eastaugh told Jay MacFarlane in any detai·l about

his experiences with sailing canoes the natural thing to do would

have been to have referred him immediately to the MacFarlanes'

lawyers or patent agents. Accordingly, a direction to wait

for and reply to an advertisement would be a course·that must

legitimately arouse suspicion even if the advertisement was to

be published only a short time after the conversation.

The plaintiffs submit that Mr. Eastaugh's evidence

that he did not in the main sell sailboards for profit should not

be believed, but it seems to me that before such an inference

could be drawn there would have to be a good deal more evidence as

to the circumstances. For instance, there is no evidence as

to the precise nature of his employment or as to the terms of his

remuneration or as to whether, in procuring sailboards, he acted

personally or for his employer.

85.

In the resu~t, I do not think that this part of the

evidence justifies an inference more adverse to Mr. EastaughJs

credibility than to say that generally it gives an impression

that he was trying to distance himself from the MacFarlanes an

from any association with having a financial interest in selling

sailboards. ~o~t the time he gave this evidence I supports this impression. But, taken by itself, I do not think(

that this impression is a matter of particular significance~

I do not think there is any foundation in the evidence

for the inference submitted by the plaintiffs to the effect that

in a dishonest sense Mr. Eastaugh's recollection improved between

the time the matter was first raised by Mr. Jay MacFarlane and

when he made his affidavit. In any event, it would not be

proper to draw such an inference unless the suggestion had been

put specifically to him in cross-examination so as to give the

defendants an oppor.tunity of meeting it by re-examination or

other evidence. See the discussion of Browne -v- Dunn, (1894)

6 R 67, by Hunt, J in Allied Pastoral Holdings Pty. Limited -v

Commissioner of Taxation, (1983) 1 NSWLR 1.

Meeting with Kelly and Dulhunty. The evidence shows

that on Tuesday, 8 February 1983, a meeting was held between

Mr. Kelly and Mr. Dulhunty and Mr. Eastaugh at the premises of his

employer Aquarama Pty. Limited, which had been arranged by Barry

Court at the instance of Messrs. Kelly and Dulhunty. They

sought the meeting because, by a letter dated 3 February 1983

and received by t~eir solicitors early the next day, the

defendants' solicitors stated that they had recently received

new evidence and information relating to prior use in Australia

86.

of the alleqed invention and that they proposed to seek leave to

amend the particulars of objection in accordance with a document

which was enclosed. The document is not in evidence but from

the amendment later made to the particulars of objection it is

apparent that it referred to the use in public by Mr. Eastaugh

and his brothers of wind-propelled sailing craft, namely canoes

and a catamaran and a land vehicle and gave details of the rigs

relied upon. The letter also enclosed photocopies of

drawings illustrating each of the prior users referred to in the

amendments, these being the drawings which had been made by

Mr. Eastaugh. As tendered in evidence these drawings contain

a number of written notations made by Mr. Lyons, senior counsel

for the defendants, two only of which were tendered and

admitted as evidence, namely the heading on the sheet showing a

trolley and sail and a note alongside the mast "about 4 ft.".

These were admitted as admissions made in correspondence

between the solicitors. According to Mr. Kelly they were

hoping to determine the veracity of the particulars and thought

it odd that Mr. Eastaugh had only come forward when the

advertisement appeared although he .was well known to the

MacFarlanes.

The evidence as to the conversation which took place

at the meeting arose in the following way. It was put to

Mr. Eastaugh in cross-examination that he had made a number of

statements at the meeting, each of which was inconsistent with

his evidence • Some of these he did not admit, stating that

he was unable to recall what had been said. Later, Mr. Kelly

gave evidence that Mr. Eastaugh had made these statements.

In cross-examination Mr. Kelly was asked to give the whole

87.

conversation and the defendants tendered the notes of it which

he had made • These were in two parts. Firstly, he had

made brief notes in Mr. Court's car immediately following the

meeting before they drove off. Then, at Mr. Court's office,

about an hour later, he wrote out a much longer account of the

meeting with Mr. Dulhunty's help. His notes included some

comments and notations which were not intended to record what

had been said.

In these circumstances it seems to me that the whole of

the evidence as to what was said at the meeting may be regarded

as relevant to Mr. Eastaugh's credit as being either consistent

or inconsistent with statements made in his affidavit and oral

testimony.

It is submitted for the plaintiffs that several state

ments made by Mr. Eastaugh at the meeting were inconsistent

with his evidence. --According to Mr. Kelly he said that the

furthest he had sailed was to Karrakatta Bank which, as already

mentioned, is inconsistent with his evidence that he sailed to

the other side of Freshwater Bay. I think that the evidence

shows that he did make such a statement at the meeting. The

nature of the inconsistency has been considered above.

According to Mr. Kelly, Mr. Eastaugh said that the mast

was made of bamboo and was about four feet high. This is the

height recorded in Mr. Kelly's notes where he has written

"mast 4' high- bamboo". It is also the height noted on the

plan prepared by Mr. Eastaugh of the hill trolley as mentioned

above. I do not regard Mr. Kelly's notes as complete in all

respects and it could well be that the note refers to the mast

88.

on a hill trolley and that Mr. Eastaugh did not in fact make such

a statement in regard to the canoe. It seems to me to be

unlikely that Mr. Eastaugh said that the mast was made of bamboo

when regard is had to the drawing prepared by him. This shows

the sprits extending the sail on the canoe drawn as bamboo but

the mast drawn much thicker and without any markings to indicate

the joints of a bamboo stem. The drawing of the hill trolley

does not show either the mast or the sprit as bamboo. Mr.

Eastaugh did not specify a height for any mast in his affidavit.

In cross-examination he agreed with a suggestion that "in the

main the masts were more or less six feet in height", but in

his affidavit he did say that he used either a broom handle or a

bean pole for a mast and that on one canoe he used an old dinghy

mast. He did mention, however, that the kites which he tried

to use as sails initially were about four feet high. Mr. Kelly

said that kites were mentioned in the course of the conversation

and that these, of course, were made from bamboo cross-pieces.

In the circumstances it seems to me to be unlikely that Mr.

Eastaugh said that the mast used on canoes was four feet high

and made of bamboo.

According to Mr. Kelly, when asked how he got involved,

Mr. Eastaugh said, among other things, that he and the MacFarlanes

were talking about them being sued one day "and t~at 1 s how it

ail came out", meaning, of course, Mr. Eastaugh 1 s experiences in

sailing galvanised iron canoes. The plaintiffs submit that this

is inconsistent with Mr. Eastaugh 1 s account in his oral evidence,

to which reference has already been made. I do not think that

the expression used necessarily means that Mr. Eastaugh told the

MacFarlanes in complete detail about these experiences. It

could mean that that was how it came about that he told them

first and then later gave details to Mr. Newton, their solicitor,

89.

(to whom he had already spoken by the time of the meeting) and

came to supply the drawings, copies of which had already been

given to the plaintiffs' solicitors. Accordingly, I do not

think any inconsistency is established by the evidence in this

respect.

It is submitted that there is an inconsistency as to

what Mr. Eastaugh said at the meeting as to who made the canoes.

But I do not think that this appears. Mr. Kelly's second

note records that Mr. Eastaugh said that his younger brother

made more than he did but in context this seems to refer to a

"billy-cart", that is, to what Mr. Eastaugh would have referred

as a hill trolley. This does not conflict with what Mr. Eastaugh

said in his affidavit which was that he made the canoes with the

help of his brothers, which he confirmed in his oral evidence,

and that they made quite a few in later years.

According to M~. Kelly, Mr. Eastaugh said that they

weren't entitled to have a patent on the free-standing rig and

that wishbone booms on yachts had been known for years. . It is

suggested that the latter statement is inconsistent in some way

with Mr. Eastaugh's evidence. I do not agree. In the context

he was merely pointing out to Messrs. Kelly and Dulhunty the

reasons why their windsurfer was not entitled to patent protection.

According to Mr. Kelly's first note, Mr. Eastaugh said

"Known Mac Far lanes for years, they approached me when they were

being sued. I sell their sailboards we' re good mates". It is

submitted that this statement is inconsistent with Mr. Eastaugh's

evidence mentioned above to the effect that in the main he had not

90.

made any profit out of the sale of sailboards. However, I do

not think that there is necessarily any inconsistency.

It is to be noted that Mr. Kelly's notes of what Mr.

Eastaugh said are consistent with those parts of Mr. Eastaugh's

evidence which are essential to anticipation, namely, the

nature of the rig he claims to have used and his method of

sailing.

Sailing to windward. The plaintiffs submit that

Mr. Eastaugh's evidence as to being able to sail his canoes to \

windward should not be accepted. This evidence was challenged

in cross-examination. Both sides called expert evidence as

to the theoretical possibility that a galvanised iron canoe made

and rigged in accordance with Mr. Eastaugh's evidence could be

sailed to windward. First the plaintiffs and then the

defendants had galvanised iron canoes made which were put forward

as substantially identical with Mr. Eastaugh's canoes and his

rigs. Evidence was given of trials with such canoes which it

was said led to the inference that Mr. Eastaugh's canoes could or

could not be sailed into the wind. The defendants also sought

to rebut suggestions put to Mr. Eastaugh in cross-examination,

and supported by the evidence of Mr. Hood, that it was impossible

for a twelve or thirteen year old boy to sail such a canoe stand-

ing up or to get in or out of it while it was floating in

shallow water.

Mr. Eastaugh's evidence was as follows. In his

affidavit he said that in the earlier canoes he could not sail

91.

•• more than 90° to the wind. When he added lee-boards he

could go further into the wind, up to about 45° into the wind.

He used to sail standing up but would sit down when going about

to allow the sail to swing over his head. He was able to sail

down wind, across the wind and to windward, mainly by moving

the mast fore and aft and sideways and moving his body weight.

In cross-examination he referred to being able to

"tack back" from across Freshwater Bay to White Beach and that

"by one sailing manoeuvre or another" he was "able to reach

any point in the compass" (T.93). He said that because the

lee-boards were fixed the canoes had a lot of lateral resistance

and so would naturally climb up to windward (T.104).

he said "The angle we could sail it was around 4 5°.

Later,

It is not

particularly efficient in windward performance but obviously

they worked to some degree" ( T. 11 0) • He said :

"Q. I suggest to you that an iron canoe with a sail such as you have shown could not travel into the wind at will? A. Well, I can assure it does, but the degree it will travel into the wind of course is another question. It certainly won't sail to acceptable heights for racing canoes or racing boards, whatever you like to put it." (T.l21)

In answer to the next question he gave an assurance that they

"got up wind with these things" and that with his canoes there

was sufficient forward and aft manipulation of the sail to

produce appreciable heading up into the wind.

This evidence contains two assertions. Firstly,

Mr. Eastaugh said that he could sail his canoes so as to travel

in- a direction which was 45° to one side or the other from the

92.

c .

direction from which the wind was coming. Secondly, he said

that the canoe could tack, that is, change course from one side

of the wind to the other and that when tacking he moved the

sail to the other side by swinging the booms over his head.

Mr. Hood expressed the view that it was theoretically

impossible for one of Mr. Eastaugh's canoes to have sailed to

windward. He said that such a canoe might be able to sail

dead downwind, probably about 45° or 50° each side of dead down-

wind. This was because of the inefficiency of the sail and

the high resistance of the canoe hull. The sail was

inefficient in that it was loose luffed and hence it was very

difficult to control its shape into anything approaching the

efficient shape which would give the craft forward motion into

the wind. Further, the fabric would have tended to stretch

and distort the shape. The hull would have had considerable

resistance because of the use of galvanised iron which would.not

have been beaten out to a smooth shape. In addition, the

use of a single sheet of iron produced a deep bow and stern

which created a resistance to changes of direction. Also, the

shape of such a canoe would have resulted in a very high area of

wetted surface in relation to its size and hence high water

resistance.

Mr. Hood's evidence seems to me to provide cogent

reasons for doubting whether one of Mr. Eastaugh's canoes could

have sailed to windward or that, if it could, it did so with

any substantial degree of effectiveness. But, of course,

Mr. Hood's reasons are qualitative in nature and have to be taken

subject to what can be done in practice.

93.

The plaintiffs had two canoes built and rigs made.

The first one was shown to Mr. Eastaugh when he was giving

evidence and he was asked to state in what respects his canoes

were different.

the se coiTIITents.

The second was made to take into account

The plaintiffs had a small boy sail the second

canoe and evidence was given that he was not able to sail to

windward or to sail standing up for more than ten or fifteen

seconds. The boy was about twelve and had become a very

efficient sailboard rider.

The defendants had a canoe .and a number of rigs made

which they claim have been demonstrated to be able to sail to

windward. One of these is said to have been a facsimile of

the Eastaugh rig. The plaintiffs dispute this result and say

that in any event the defendants' canoe and Eastaugh rig both

have features which made it more likely to be able to sail to

windward than Mr. Eastaugh's canoes.

The defendants' canoe was made in Western Australia and

sailed there in two places on 1 and 3 August 1983 and was then

brought to Sydney where it was sailed in the vicinity of

Vaucluse Bay on 4 August and during the morning and early

afternoon of 5 August. It was sailed with several rigs and

with the Eastaugh rig upside down as well as with that rig in

its correct position. A number of photographs were taken at

each of these trials but unfortunately these were not taken

systematically. They were taken with more than one camera and

from one camera in various positions, sometimes using a

standard lens and sometimes a telephoto lens, and did not

completely record each trial. As originally tendered

94.

they were not in the sequence in which they were taken but were

later re-arranged to correspond with the negative numbers.

Except in the case of the Eastaugh rig when it worked only

spasmodically there was no wind indicator ribbon on the mast

which would have shown in the photographs the direction of the

wind. This appeared only from the lie of any nearby boats on

moorings which happened to be in the photograph. In the

result the photographs do not provide as reliable an indication

of what happened on the trials as they might have done.

There was a final trial of the Eastaugh rig at

Narrabeen on 8 August of which a video film was made which

was shown twice in Court and which I have since viewed again.

Once again the ribbon-wind indicator on the mast functioned

only occasionally. Because there was a stronger wind its

pattern on the water surface gave a better indication of

direction than in the case of the other trials but one which

was not good enough, in my opinion, to do more than provide

an illustration of the evidence given. It is regrettable

that on this and previous trials some point was not identified

as being definitely up-wind of the starting point and the

canoe sailed, if it could be, to that point. Such a course

would have avoided some of the controversy raised in the

hearing as to what the photographs and the film actually

showed.

Evidence of what happened at all the trials of the

defendants' canoe has been given by Mr. Hall who has been for

the past four years an employee of Windrush Yachts Pty. Limited

who observed the canoe being sailed by a twelve-year-old boy,

Murray Jacob, who was of average size and weight and had had

95.

significant sailing experience. Professor Joubert gave

evidence of his observation of the trial at Vaucluse Bay during

the early afternoon of 5 August and of inferences he would

draw from the video film made of the trial at Narrabeen.

A distinction is to be drawn between the direction

in which the hull of a boat is pointing while sailing and

the direction in which it is actually travelling through the

water. All boats sailing into the wind, or indeed down

wind unless the wind is dead astern, have some degree of side-

ways movement through the water. Accordingly, a boat may

be pointing in a direction 45° away from the wind but

travelling in a direction only 80° away. If a boat is able

to sail to windward, that is to travel in a direction which is

significantly less than 90° from the direction .of the wind,

it will have a capacity to return to its point of departure

and to sail to any pQint in the compass.

A great deal of oral evidence, including answers to

detailed cross-examination, was given in respect of each trial

of the defendants' canoe with the various rigs. The evidence

principally relied upon for the defendants relates to the trials

at Vaucluse Bay on 4 August, the morning and early afternoon of

5 August and at Lake Narrabeen on 8 August.

On 4 August the canoe was sailed with a small

triangular rig upside down. According to Mr. Hall sailing

conditions were difficult because there was a surge resulting

from heavy seas and an offshore breeze. The canoe was only

96.

able to sail up and down parallel to the beach with the wind

abeam. Mr. Hall said that he made some ground to windward

but, taken as a whole, the evidence, including the photographs,

is inconclusive in this respect. It is apparent that the

canoe was blown downwind substantially. I do not think that

it could be reliably concluded that in the course of this

happening it made any way to windward.

On the morning of 5 August, and in subsequent trials,

the Eastaugh rig was used.

trial was that of Mr. Hall.

The only account giveh of this

He said there was no wind at

the shore and that the canoe had to be paddled out to 400m. or

500m. from the beach in order to sail.

canoe actually made ground to windward.

When doing so the

In cross-examination

he described the course of the canoe as "reaching", which he

defined as sailing slightly above 90° to the wind, that i.s, at

an angle of less than 90° to the direction from which the wind

was coming. Mr. Hall's evidence is not illustrated in any

decisive way by the photographs. At best it indicates that

the canoe was able to sail slightly closer to the wind than 90°.

Early in the afternoon of 5 August there was a

further trial when the wind was apparently lighter than in the

morning. Professor Joubert observed the trial. According

to him the wind was initially northerly and during the trial

varied more to come from a north-east direction. Initially

the canoe sailed for about 300m. in a direction a little north

of east, which I will call the first leg of the trial. An

attempt was then made to tack or go about but, due to lack of

wind, this was unsuccessful and the canoe was driven downwind

97.

to the south for some distance. It then sailed on a return

course with the wind, which was then veering to the east,

behind it and close to the shore which it had left,turned

to follow a direction a little west of north and proceeded

into the wind which by then had changed further to the north-

east on a course which I will call the second leg. The

canoe then turned to sail back a little inshore of the second

leg with the wind diagonally behind it. Professor Joubert's

evidence is illustrated by a chart on which he drew the course

of the canoe and the varying directions of the wind. It is

also illustrated by photographs which he took all from the one

position, although the camera was pointed in different

directions. So illustrated I think that his evidence leads

to the conclusion that the canoe did make a little ground to

windward on each of the first and second legs, and could be

said to have sailed to windward,although not to a substantial

respect. The photographs indicate that there was a

considerable difference between the direction in which the

canoe was pointing and that in which it was actually travelling.

Also, the photographs indicate, I think, that the change of wind

was somewhat greater than noted by Professor Joubert on the

chart.

It is submitted for the plaintiffs that the cross

.examination of Mr. Hall, who also was present at this trial,

shows that in his estimation the canoe did not sail to windward.

I think that although he does not suggest that any substantial

progress was made to windward he did clearly express the view

that the craft did go to windward, certainly on the first leg

of the course.

98.

The conclusion to be drawn from the evidence of the

trial on the afternoon of 5 August is, in my opinion, that the

canoe was able to travel in a direction of, perhaps, 75° to 80°

from the wind.

Mr. Hall was present at the trial at Narrabeen Lake

on 8 August. According to him the wind was 10-15 knots,

gusting to 18-20 knots. The boy had a practice' run before

shooting of the film started. He sailed off the beach to a

sandbank some 100-150m. towards the centre of the lake. He

then made two more runs which were filmed and then Mr. Hall

himself made a third run, which was also filmed. The film

was shown first without comment and then with comments from

Mr. Hall. He said that at the beginning of the first run

by the boy he was attempting to point the canoe too close to the

wind with the result that he was "stalling it" or "pinching it".

Later he was pointing to around about 60-65°. He jibed,

that is changed direction, while running before the wind so as

to change the direction from which the wind was blowing from one

side to the other of the canoe. Then he travelled back

towards the shore "broad reaching", that is, with the wind at

about 90° to the direction of the canoe. He said that on

the second run the boy actually was pointing to "anywhere

between 50 or maybe even 4 5 degrees and making ground". He

sailed to the bank and then back to the shore "bringing the cance

quite high ~nto the wind". Then·.' Mr. Hall sailed the canoe

but did not manage to get up into the wind but was "running

straight across the breeze". In cross-examination Mr. Hall

conceded that on each of the runs the boy returned to the beach

99.

at a point downwind of from where he started but he was not

asked how far. Mr. Hall did not distinguish in any of his

evidence about the trials on Narrabeen Lake between the direction

in which the canoe was pointing in relation to the wind and the

direction in which it was actu2lly travelling.

In my opinion the evidence of the trial at Narrabeen

Lake shows that the canoe was able to sail to windward to

some extent but I do not think the evidence justifies any

conclusion as to what angle to the wind it could travel except

to say that it did not travel substantially into the wind but

possibly in a direction about 80° or so from it.

The film, in my opinion, supports the case put for the

plaintiffs to the effect that on this trial the canoe was able

to travel substantially upwind only for very short periods of

time before it got into difficulties. These may have been

the fault of the boy sailing the canoe but, if so, that does

not assist in deciding what inference to draw.

The evidence of the trials of the defendants' canoe

therefore establishes that it could be sailed to some extent

into the wind but not, in my opinion, to any substantial extent.

This result is at variance to what was claimed by Mr. Eastaugh

for his canoes. As to his evidence that they were able to

tack, this was given in terms which gave the impression that

they could tack without difficulty in the usual manner of small

boats which is that they have enough momentum to turn into the

new direction although they may lose it before the wind produces

a forward force on the new position of the sail.. The

100.

•

evidence of the attempts at tacking~ both at Vaucluse and

Narrabeen Lake, shows that it could be achieved only with

difficulty and at the expense of losing ground while the boat

was manoeuvred into its new direction.

There is no suggestion that the defendants' canoe or

the Eastaugh rig were in any way inferior to the canoes and

sails which Mr. Eastaugh actually used. Indeed, as already

mentioned, the plaintiffs submit to the contrary.

The defendants' canoe was well made. The galvanised

iron had been flattened to a considerable extent by running the

tyres of a car over it but I do not think that this necessarily

achieved a result better than would have the hammering and

stamping which Mr. Eastaugh said he performed. The

defendants' canoe had a bottom which was as flat as this kind

of construction would allow. The expert evidence indicates

that a flat bottom considerably promotes stability. In this

respect the defendants' canoe is to be contrasted with the two

canoes of the plaintiffs' which were rounded, a factor which no

doubt contributed to their instability and inefficient sailing.

Mr. Eastaugh does not, in his affidavit, refer to the necessity

of making the bottom of the canoe flat, although he did do so in

commenting on the plaintiffs' canoes. In my opinion the shape

.of the hull of the defendants' canoe should be regarded as being

as good as is likely to be obtained by the rough-and-ready

methods of manufacture which Mr. Eastaugh described, but I do

not think it can be concluded that it was superior to anything

which he made.

101.

The lee-boards on the defendants' canoe are

substantially larger than those described by Mr. Eastaugh.

Although his recollection may be at fault in this respect, for

present purposes, bearing in mind that the defendants carry

the onus of proving anticipation, it has to be taken as

accurate. The defendants' lee-boards were larger than those

originally used with their canoe. It must be assumed that

those conducting the trials thought larger lee-boards would be

an advantage. Also, instead of having them vertical and

unshaped, as did Mr. Eastaugh, they inclined them to the rear

and rounded off the leading and trailing edges. This also

must be assumed to have provided an advantage.

The Eastaugh rig used on the defendants' canoe was,

in my opinion, as good as was likely to be achieved with this

kind of construction. The sheet used was new and of a

closely woven and stiff quality. It was folded over into a

triangular shape so that the sail consisted of a double

thickness into which the surplus material was folded. It

was attached directly to the foot of the mast. At the top

a small piece of rope was tied around the sail and this was

then secured to the top of the mast enabling the sail to be

stretched along it, this stretching taking place along the bias

of the material. At the clew end a rope was tied around the

sail which was then evidently stretched towards the end of the

booms. This was secured and then the end of the sail itself

was tied to one of the two middle booms. Mr. Eastaugh descr:ibed

his sail as having been secured with grocer's string and he did

not suggest that he took any particular steps to stretch it

along the mast or towards the end of the booms. It is clear

1 02 0

. )

from the expert evidence that the defendants' sail was as

efficient as might be expected. It is highly unlikely that

Mr. Eastaugh's sails were any more efficient. His evidence as

to how he made them and of the materials he used indicated that

they were likely to have been less efficient.

Mr. Eastaugh's diagram shows his mast attached to the

centre cross-beam of his canoe. With the defendants' canoe

the mast was attached to the cross-beam forward of this. The

persons conducting their trials obviously thought that this was

the most advantageous position in which to put it. Professor

Joubert agreed that moving the mast'forward would improve the

sailing capacity of the canoe. It seems to me rather

surprising that Mr. Eastaugh should have drawn his canoe as

having the mast so close to the centre when ordinary observation

of small boats indicates that the mast is invariably towards the

bow. The expert evidence indicates that this is so because

it leads to a better balance, that is, to minimising the

natural tendency of a sailing boat to head up into the wind.

It is unnecessary, I think, to describe the various

trials made with the plaintiffs' canoes. The second of them

was a reasonable compliance with Mr. Eastaugh's comments given

in evidence. Evidence of a trial with this canoe indicates

that it could not sail to windward at all and could not even

sail with the wind at 90° to it. It was also said that the

young boy who was sailing it was unable to stand up for more than

15-20 seconds, thus proving, in practice, the various theoretical

conclusions which Mr. Hood had expressed in his evidence.

Trials of the defendants' canoes showed that Murray Jacob was

able to sail it standing up for most of the time and this

103.

supports Mr. Eastaugh's claim to the same effect. The boy

sailing the plaintiffs' canoe must, therefore, be regarded as

not as skilful as either Murray Jacob or Mr. Eastaugh would

have been when sailing his canoes. The result apparently

produced by the plaintiffs' trial should, therefore, be

regarded with some caution.

Mr. Hood gave lengthy and complicated evidence of

theoretical considerations relating to the possibility that a

galvanised iron canoe, made and rigged as described by Mr.

Eastaugh, could sail to windward and be sufficiently stable

so as to be sailed standing up. His calculations had to be

corrected on several occasions because of errors found in them

by the defendants. The detail of this evidence need not be

stated. It seems to me to be only of slight weight but

nonetheless a factor to be taken into account when evaluating

the various trials.

In my opinion the evidence leads to the conclusion

that Mr. Eastaugh~ly exaggera~the capacity of his.

galvanised iron canoes to sail to windward. I do not think

that in any practical sense they were capable of sailing to any

point in the compass upwind because they are unlikely to have

been able to sail substantially closer to the wind than 90°.

On the other hand, his claim that he was able to sail them

standing up and that he could get in or out of them in two or

three feet of water have, I think, been supported by the eviden~

of the trials.

104.

.. '

Corroboration. There is no corroboration of

Mr. Eastaugh's experiences with galvanised iron canoes by any

other witness. Neither of his brothers or his father (who

had originally told him how to make an iron canoe} was called.

There may be perfectly good explanations for this but none was

offered. According to Mr. Eastaugh his younger brother did

not continue on where he left off. Mr. Eastaugh said "From

memory, he wasn't that sort of rapt in the whole thing but the

youngest bloke made many of them too", (T.85-7) but he didn't

remember the details because at that stage he was sailing in

proper boats.

It seems to me that the absence of corroboration is

an important consideration to take into account. It might be

fibted that in the English proceedings on the corresponding

patent the prior user was corroborated by a brother of the boy

who was 1nvolved.

Other matters. The plaintiffs criticised Mr.

Eastaugh's lack of recollection of his interview with Messrs~

Kelly and Dulhunty which, it was submitted, could not be

genuine because the interview had taken place a relatively

short time, namely five months, before he gave his evidence,

compared with the detail with which he described sailing his

canoes. I do not think there is any real substance in this

submission. It is not unlikely that he genuinely did not

have a clear recollection of the detail of what was said at

the meeting.

105.

• it

One matter which was put to Mr. Eastaugh in cross

examination was that, contrary to his evidence, the Karrakatta

Bank was never exposed and he was shown charts which indicated

that over a long period of time the minimum depth of water over

it was two feet. However, later evidence, that of Mr. George,

fully supported Mr. Eastaugh's evidence that at certain times

and tides areas of the Bank were exposed.

There is some material which bears upon the probability

that a 10-13-year-old boy would have adopted the rig which Mr.

Eastaugh says he employed. It is\ only natural, I think, that

a boy of that age, with a galvanised iron canoe in a place

where there are a lot of sailing craft, would turn his thoughts

to providing it with a sail. To anticipate the evidence of

other witnesses which will be mentioned below, Mr. George spoke

of canoes on the Swan which were sailed with holland blinds

used as a square rig •. Mr. Morris tried to sail his rehabilit~ec

surf ski with a beach umbrella and then with a square sail on a

paddle before he used a triangular sail. Mr. Pearson used a

make-shift canvas sail for his surf ski and Mr. Douglas did the

same for his iron canoes and an aquaplane.

The evidence of all these witnesses shows that the use

of a hand-held rig is likely to occur to a young person trying

to sail an unconventional craft although Mr. Morris used a fixed

mast on his galvanised iron canoe when he was about eight years

old. Each tilted his rigs fore and aft in order to steer the

craft. To anyone with any knowledge of sailing the use of

a dagger-board to assist in getting into the wind would'have

been obvious as all sailing boats have either a fixed or

1 06.

. ' retractable keel or fin. When Mr. Douglas built his canoe

at the age of fourteen or fifteen he nailed a lee-board to

its side for this purpose. Mr. Morris tried to fix a dagger-

board but did not succeed. These matters support the probabilxy

of much of Mr. Eastaugh's evidence although it must be remarked

that they do not necessarily support that it is genuine.

Mr. Eastaugh gave his evidence with confidence and in a

convincing manner. In general his answers appeared to spring

readily from a clear recollection of detail. These corrunents ---------------------------extend to those parts of his evidence which were, in my view,

"'""'""'"" ··-~""''"'"" . ···-' ... ~ .... _,...._. .. ,_,._,.,..,..,..,._._ ... ,.,,.,...., •~·--'"'"''"~"-""--~-··•-""--···~-·-n ..... ~-...• ·- • ,... \

'""'"'"'-'<''-·'-' ____ ,..,w..._.._ ... _.,.,..__,. ,,...,..,.... •. hr ·-~·,_,

careless as to detail, or exaggerated. In some parts of his

evidence he gave an impression of brushing aside the importance

of detail as, for instance, when he said that in his early

canoes the mast was j arnrned in between two cross-beams two inches

apart, a statement which a careful person could not make without

immediately realising that it was improbable. In my opinion

Mr. Eastaugh's demeanour, and the impression which he made when

giving evidence, should not be regarded as of any 1mpor ance in

assessing his credibility. In my opinion the question to be

decided is whether, having regard to the defects in his evidence, ____________________________________ .:.__ ____ _ his account is sufficiently convincing as to the details of his --------------------------------------------------------------------canoes and rigs to establish a prior public use which comes

---------~-------------------------------------------within any of the claims of the patent.

-· ------------ -------------The plainti~fs' case is, in effect, that Mr. Eastaugh

has made up his evidence. They do not directly suggest that

this is something which he did in collaboration with the

MacFarlanes. Indeed, no question was put. to him to that effect,

as would be required by the doctrine in Browne -v- Dunn, and it

was not open to the plaintiffs to make such a submission.

The plaintiffs have referred to two decisions on the

onus of proof where prior public user is alleged: Toyo

107.

Tsushinki's Application, (1962) RPC 9 at 15; Laguerre's Patent,

( 1 9 7 0) RPC 58 7 at 59 1 , 59 3 , 59 6 • It is essential that an

allegation of prior P..2:blic use should be strictly proved.

Evidence which is uncorroborated is undoubtedl

should be scrutinised with particular care. The Court must

be satisfied that the proof is sufficient in the circumstances,

having regard to the gravity of the allegation.

I do not think that the evidence justifies an inference

that Mr. Eastaugh has made up his account of his experiences

of making and sailing corrugated iron canoes. Taken as a

whole his evidence shows the developirent of the latest of his

canoes by a procedure of trial and error, the details of which

are basically credible. While his reasons for attempting to

build a catamaran \\rere not given convincingly it seems to me to

be someth;ng which a small boy might well try to do being aware

of the existence of outrigger-·type boats. It ,.,as also

natural, I think, that ·he shou.ld have endeavoured :to use a

similar rig on his hill-trolleys, although there can be little

doubt that he results which he obtained.

In my opinion the evidence given by Mr. Eastaugh as to

his various canoes and rigs, the catamaran and the hill~trolleys,

should be regarded as sufficiently convincing to make out an

allegation of prior user if that is otherwise appropriate.

Anticipation. It is only necessary to consider the

last design of Mr. Eastaugh's canoes. The plaintiffs make a

number of submissions as to why it does not anticipate the claims

in the patent. The defendants do not submit that claim 10

was anticipated on the construction given to it above.

108.

Firstly, it is said that the mast is not "pivotably

coupled to the body" as is required by claim 1. On the

construction given above to this claim there can be no doubt that,

with Eastaugh's design, the mast had "a plurality of axes of

rotation for permitting (it) to pivot out of the vertical attitude

along any of a plurality of vertical planes". But the

plaintiffs submit that the slightly loose rope joint which was

used, and which enabled the mast to be lifted clear of the canoe

if it sank, was not such as to "couple" the mast to the boat

within the meaning of the claim. This is not, in my opinion,

correct. ' As already indicated, in the context it seems to me

to be sufficient that the mast and the body be connected together

by a joint which restrains the movement of each in relation to the

other sufficiently to serve the purpose of providing wind

propulsion. The fact that when the sail is not providing such

propulsion the mast may be lifted clear of the boat without any

restriction from the joint is irrelevant. No other reason is

given why this canoe did not anticipate claims 1 and 2.

Secondly, it is submitted that there is no infringement

of claim 3 because Mr. Eastaugh's booms did not hold the sail

taut. What claim 3 requires is that the means for extending the

sail should comprise a boom "to hold said sail taut". In my

opinion Mr. Eastaugh's booms come within this claim. Their

purpose was clearly to hold the sail taut. The claim does not

require any degree of tautness or, indeed, that the tautness be

adequate to provide an efficient sail shape. In any event, in

my view Mr. Eastaugh's booms were adequate to provide sufficient

tautness although it may be that the nature of the sail which he

109.

used made it difficult to get sufficient tautness to provide an

efficient shape when sailing.

Thirdly, it is submitted that because claim 3 claims

only a single boom to perform both the functions mentioned it

has novelty over Mr. Eastaugh's design which uses two pairs of

booms. In my opinion this is not so. Mr. Eastaugh's

design has all the integers of claim 3 and it does not matter

if there is present an added integer of the nature in question.

Fourthly, it is submitted that Mr. Eastaugh's canoes

did not anticipate claim 10 of the patent. This, I think, is

undoubtedly correct if that claim is given the construction

which is adopted above. The defendants do not submit to the

contrary.

For the above reasons it should be held that Mr.

Eastaugh's last canoe and rig anticipated claims 1 to 9 of the

patent.

Pearson.

There is no dispute as to Mr. Pearson's evidence which

is contained in his affidavit. The defendants submit that

his prior public use of his sailing surf ski built and used

according to his later method during 1958-1960 when he was

15-17, literally anticipates claims 1, 2, and 4 to 8. It is

said that claim 3 is anticipated under the doctrine of Griffin

-v- Isaacs.

The craft in question was a surf ski about 2 ft. wide

and 12 ft. long, the deck of which was stepped down to a lower

11 0.

level a short distance from the bow. Attached to the

upright section of the step were two foot stirrups protruding

horizontally above the lower level of the deck. These

consisted of rope threaded through plastic hose. The sail

was a rectangular tarpaulin one edge of which was tied to the

top and bottom of a bush pole approximately 8 ft. in length

and 1~" in diameter. Another bush stick was tied to the

opposite top corner of the sail. The bottom end of each

bush stick was placed in one of the foot stirrups. The craft

was sailed by holding the bush sticks one in each hand so as

to extend the top of the sail from the mast and by placing a

foot on the lower free corner on the deck so as to keep the

bottom section of the sail extended from the mast. In this

way Mr. Pearson was able to sail downwind and up to about 45°

either side of downwind.

The plaintiffs submit that there was no anticipation

of claim 1 because the mast was not "pivotably coupled to the

body by means of a joint extending between the mast and the

body" because there was no coupling nor was there any join_t

which formed a distinct part of the apparatus. For reasons

already given I think that the mast was coupled to the body

but that it was not so coupled by means of a joint extending

between it and the body. Accordingly, there was no

anticipation of claims 1 to 8. Evidence was not given in

relation to this craft as to what steps for its improvement

would have been apparent to the hypothetical skilled person

in the trade·. But it is said that nonetheless claim 3 was

anticipated under the doctrine of Griffin -v- Isaacs because

the use of a boom was commonplace. I do not think that any

111.

..

purpose would be served by considering this submission. I do

not think that the craft came within claim 4 because there· was

no means adapted to enable the user to grasp either side of

the sail. Claim 7 was not, in my view, anticipated because

there is no evidence which would justify regarding the skeg on

the canoe as lee-board means as defined in the specification.

George.

There is no dispute as to Mr. George's evidence.

The defendants place reliance on hi~ user, in about 1946, when

he was about fourteen, of a sailing craft consisting of a canoe

made from a surf ski and a sail. It is said that this

apparatus anticipated claims 1 to 8 of the patent.

In his affidavit Mr. George gives a detailed

description as to how, by trial and error, he reached the design

on which the defendants rely. This corresponds in a

general way to the steps taken by Mr. Eastaugh to evolve his

latest design. Mr. George used an Air Force Disposals' kite

as a sail. This had two vertical bars and one horizontal

cross-bar. For additional strength he replaced the original

bars with three-quarter inch wooden dowel and made some other

alterations. The sail was about 5 ft. tall and about 4~ to 5

ft. wide across. The surf ski had a raised forward

deck and along the centre line of this he drilled three holes

into each of which the mast might be placed. This provided

him with a means to alter the position of the mast forward or

astern to trim the boat in various conditions. He usually

sailed kneeling on the rear deck with his knees against the

112.

central cross panel, holding the sail by the spars. Occasionally

he stood. He was able to steer the boat by tilting the mast

forward or back and by selection of one of the three holes as

the mast socket. He sailed the canoe on the Swan River for

some time between six months and a year in about 1946 and then

moved into proper sailing craft.

The plaintiffs submit that in a number of respects

Mr. George's craft did not anticipate any of the claims in the

patent. Firstly, it is said that it did not have, within

the meaning of claim 1, "a mast pivotably coupled to the body

by means of a joint extending between the mast and the body".

There was no separate part which could be said to so extend.

For reasons already given I think that the mast was pivotably

coupled but not by means of a joint extending between it and

the body.

Secondly 1 the· plaintiffs submit that Mr. George 's craft

did not come within claim 1 in that there was no "means for

extending the sail laterally from the mast". In this craft

the sail was attached to the top and bottom of both vertical

cross braces and was extended to either side of the vertical

cross-brace being used at the time as a mast. For reasons

already given I think that the rig came within this part of the

claim.

Thirdly, it is submitted that claim 3 was not

anticipated because the "means for extending the sail" did not

comprise "a boom laterally disposed on said mast".

already given I think this is correct.

113.

For reasons

..

Fourthly, in my opinion, as is submitted for the

plaintiffs, the craft did not come within claim 4 because there

were no lee-board means as defined by the specification.

Claim 9 was not anticipated because the craft did not

have two booms. It is submitted that nonetheless there was

anticipation under the doctrine in Griffin -v- Isaacs because

of the expedient well known in sailing circles of using a wishbone

boom which would obviously have led to the adoption of a double

·boom if there was any reason to need it. I am not satisfied

that there was anticipation in this respect because there is no

evidence or reason to suggest that the nature of the craft would

have given rise to any reason for using a "pair of boom members ...

Finally, on the interpretation given above to claim 10,

there was no anticipation of that claim.

Morris.

There is no dispute as to Mr. Morris's evidence which

is contained in his affidavit and brief oral examination. In

the 1930's, when he was between the ages of 17 and 23; he built

and used a number of surf boards. These were quite substantial •

craft, from 11' to 12' long, and 2'3 11 wide, and 5 11 deep at the

centre. The craft was propelled by the use of a double paddle

over 10' long. Such skis were customarily paddled with the

rider standing up. Stability was assisted by a rope about 10'

long attached at one end to an eyelet at the front of the canoe

and at the other to the centre of the paddle. The rider

wound the rope on to the paddle to give it a length appropriate

to the part of the board on which he was standing. Riders

habitually rode the surf ski back on to the beach in the

standing position using the paddle in the water for steering.

114.

Mr. Morris tried to hold a sail using the paddle as a

mast. After trial and error he adopted a triangular sail using

the paddle as a mast. The top of the sail was tied to the top

of the paddle and at the bottom each point of the triangle was

tied to the end of a boom. The boom was loosely tied to the

mast and projected slightly forward of it. The mast was kept

stable by a rope extending from the eyelet at the nose of the

ski to a point towards its lower end. Mr. Morris sailed

standing up. He placed one hand on the mast and pulled it back

against the paddle rope. This gave sufficient friction between

the lower paddle and the deck to provide a fairly rigid and

stable structure. His other hand was held on the boom which he

could pull forward or backward to adjust the sail. By turning

the mast he could wind the rope on or off it and so move it

forward or back, thus trimming the craft. He was not able

effectively to provide the craft with a dagger-board which in

any event would have impeded its use as a surf ski because one

of the objects was to ride completely on to the same~ It

had a skeg at the stern.

Mr. Morris was able to sail his ski quite successfully

around. various public beaches and about eight other people with

whom he was friendly constructed surf skis in the same manner

and sailed with him off the ocean beaches. One of them sailed

to Rotnest Island, which is about ten miles off the coast, and

returned safely by the same means.

In my opinion the Morris craft cannot be said to have

anticipated any of the claims of the patent. It did not come

within claim 1 because there was no joint in the sense mentioned

above, although otherwise it did. It did not come within

claim 7 because of the absence of a lee-board, nor within

1 1 5 •

...

claim 9 because of the absence of a pair of boom members.

I do not think that the doctrine of Griff in -v- Isaacs has any

application to claims 1 to 9 because there is no evidence that

the nature of the craft suggested any need for improvements by,

for instance, the use of wishbone booms or of a universal joint.

There was no anticipation of claim 10 because of the interpretatbn

given to it above.

OBVIOUSNESS.

Law.

In Wellcome Foundation Limited -v- V. R. Laboratories

(Aust.) Pty. Limited, {1981) 55 ALJR 249 at 251, Aicken, J,

with whom the other members of the Court agreed, said :

"It is as well to bear in mind that the question of obviousness involves asking the question 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, without regard to documents in existence but not part of such common general knowledge. The question is not whether it was or would have been obvious to the inventor or to some other particular worker in the field." (251)

He relied upon Minnesota Mining & Manufacturing eo. -v~ Beiersdorf.

It is submitted for the defendants that, although it is now

established that an objection of obviousness cannot be supported

by a prior publication unless it has become part of the common

knowledge in the particular trade or art or science, the same

limitation does not apply to the use which may be made of a

prior public use. It is submitted that common general knowledge

may be added to an instance of prior public use which is not proved

1 1 6 •

to have become part of common general knowledge to invalidate a

patent for obviousness. It is said that this is settled law

not disturbed in the Minnesota Mining & Manufacturing eo. case.

However, no authority has been cited in support of this

proposition. It seems to me to be contrary to the reasoning

contained in that case. Further, it is contrary to what was

said by Windeyer, J in a decision at first instance: Sunbeam

Corporation -v- Morphy-Richards (Australia) Pty. Limited, (1961)

35 ALJR 212 at 217-8, where he discussed the relationship between

the grounds of novelty and obviousness. Accordingly, in my

opinion, the various instances of prior publication and public

use relied upon are not available to support the objection of

obviousness in the way suggested for the defendants. They are

only available if they had become part of common general

knowledge.

Darby.

There is no evidence to suggest that the Darby article

as it appeared in the Amateur Yacht Research Society public-ation

ever became either widely read or part of genera.l public

knowledge in Australia. There is evidence that the relevant

issue of Popular Science Monthly was reasonably widely distributed

in Australia. The magazine had then a circulation of

approximately 1,700 copies throughout Australia and is likely to

have been read by up to 5,000 people. The two issues in evidence

indicate that at the time when the Darby article was published

there was a regular "boating and outdoor sports" section in

which, from time to time, there might appear an article of

particular interest to users of sailing boats. .Affidavits by

11 7.

eleven persons were read stating that they had read the.Darby

board article. All were regular readers of Popular Science

Monthly at the time. Most of these bought the magazine as a

matter of general interest in hobbies and technological

advances. Three who were interested particularly in sailing

intended to build a Darby craft but never did so. None of

them was actively engaged in boat building or regular sailing.

Mr. Douglas, who was born in 1924, said that Popular Science

Monthly was his boyhood bible. He had been engaged in the

boat building industry for about forty-five years. He knew it

to have been read by his friends. Professor Joubert had read

issues of the magazine before 1968 but not the Darby article.

Mr. George remembered reading the article in the 1960's in a

magazine but could not remember what one.

There is no evidence that the Darby article had come

to the notice of any9ne in the field to which the patent was

addressed except as above. In these circumstances it seems

to me that it cannot be concluded that the article, and what

it taught in relation to sailing craft, had become common·

general knowledge. In these circumstances it cannot be

relied upon to support the objection taken of obviousness.

Other prior uses.

There is no evidence that any of these became part of

general common knowledge in the field and accordingly these

cannot be relied upon.

1 1 8 •

General common knowledqe.

As already mentioned, it is conceded that each of the

integers in the claims was well known before the priority date.

To this may be added the consideration that the various

instances relied upon as prior public use show that young

persons addressing the problem of how to put a sail on a craft

not ordinarily used for sailing readily came up with the idea

of a hand-held rig, and of using this to steer the craft.

This indicates that anyone with experience in the sailing

field who had been given the task at the priority date of

finding suitable sailing means to put on a surf board would

have been likely to try a hand-held rig. However, it is to be

noted that the patent extends to land vehicles as Well as to

water craft. Once the idea of a hand-held rig had come to

the fore it would seem likely that no great amount of

imagination would have been needed to equip a surfboard with a

removable fin and the other features of a sailboard.

These con~iderations provide reasons for doubting

whether, in relation at least to sailboards, the patent

involves any inventive idea. Perhaps all that it involved

was the imagination to see the use which would be made of a

surfboard equipped with sailing means. Once this step had

been taken perhaps determining what means could best be

employed did not require any inventive step.

However, the dangers of determining such questions

with the advantage of hindsight have been constantly pointed

out by the authorities. No one has been called to give

evidence of how the hypothetical unimaginative worker in the

1 1 9 •

.... . trade might have approached the problem of contriving sailing

means for a surfboard at the priority date. In these

circumstances there is, I think, insufficient justification

for concluding that the inventive concept of the patent was

obvious.

I do not regard the evidence of commercial success as

having any bearing on the question of invention. Sail boards

did not supply any long-felt need. They should be regarded

simply as the embodiment of a concept for which it was foreseen

there would be a considerable demand in affluent countries with

appropriate climates.

Conclusion.

In my opinion the ground of obviousness is not made out.

Lack of utility.

It is conyenient to consider under this heading the

remaining objections based on pars. (c), (d) and (h) of s.100(1)

of the Patents Act. The latter paragraph provides that a

patent may be revoked, either wholly or in so far as it relates

to any claim, upon the ground:-

"That the invention, so far as claimed in any claim of the complete specification is not useful."

In the specification emphasis is placed upon several

aspects of one feature of the invention. It is said that

"the position of the propulsion means is controllable by the

user and is substantially free from pi:votal restraint in the

absence of such control" (the consistory clause), and that

120.

.... ..

"in the event of sudden or excessive winds, the user need

only release the sail and it will immediately fall in any

direction, freeing the vehicle from the propulsive force".

Reference is made to the use of a universal joint in

particular embodiments "to enable the propulsion means to be

substantially free-floating in the absence of user control".

By contrast with these statements claim 1 extends to a wind

propelled apparatus in which the joint permits the mast to

pivot out of the vertical attitude along only two vertical

planes and then only to a substantial extent and not

sufficiently to allow the mast to ~ free-floating or to fall

into the water. It also extends to apparatus in which the

joint contains only two horizontal axes of rotation. The .----~

evidence is clear that such a joint would not produce the

results mentioned in the specification nor would it be

practical for sailing purposes.

In these circumstances it is submitted that claim 1

is not useful within the meaning of the paragraph because it

would catch apparatus going far beyond those described in the

specification and which would not be useful.

Reference has been made in argument to four cases:

Hatmaker -v- Joseph Nathan & Co. Limited, (1919) 36 RPC 231

at 239; Sonotone Corporation -v- Multitone Electric Co. Limited,

(1955) 72 RPC 131 at 146; American Cyanamid Company -v-

Ethicon Limited, (1979) RPC 215 at 261; and Olin Corporation

-v- Super Cartridge, a decision of the Full High Court, (1977)

14 ALR 149 at 171, per Stephen and Mason, JJ.

121.

/

These cases support the conclusion to which the above

statement of facts leads, namely, that claim 1, and hence

claims 1 to 9, are not useful. Similar reasoning leads to

a conclusion that, contrary to s.40, those claims are not

"fairly based on the matter described in the specification".

It is submitted that claim 10 is not useful in that

a craft with the mast stepped in the dagger-board is not useful

but the evidence does not support this.

There is no need to consider the question arising

under par.(d), namely, whether the invention claimed is one

within the meaning of the Act, because this question has been

dealt with under the headings of Lack of Novelty and

Obviousness.

CONCLUSIONS

For the foregoing reasons:-

1. In so far as they relate to watercraft,claims 1-10

are invalid on the ground of lack of novelty (1-10

having regard to the Darby publication and 1-9,

the Eastaugh publication).

2. Claims 1-9 are invalid on the ground of lack of

utility and of failure to comply with s.40 of the

Patents Act, 1952.

3. The defendants' sailboards would otherwise have

infringed claims 1-9 but not claim 10.

In these circumstances it is unnecessary to consider

whether SailboarQs Australia is an exclusive licence for the

purpose of these proceedings.

122. \ \ '') i J ·- . .--

, ,

',I'he hearing should be adjourned to enable the

parties to consider what orders are appropriate. The

defendants should bring in short minutes,of which notice

should be given to the plaintiffs.

I CE:!!i:'~ t' ' '· . ' . · · '! · · :,::; <,;,:·, t:1e preceding pages ar:::: a truE: c.:_ y -~ f t; :: rec..so.1s for judgment

herein of his ~our Mr.]};;~'·

Data: 1 o.J~ {1.L _ ou . ~/qftf.

123.

Windsurfing v Petit - Judgment 28-Jun-84

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Transcript of Windsurfing v Petit - Judgment 28-Jun-84