,,

. I
; / 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
i.
1
2
6
7
8
8
9
10
10
11
16
\7
~ 7-",,v
/'
/
)'.
/
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
- ~ - - - ~ ~ - - - - - ~ - ~ - - - - - ~ - - - ~ - ~ - ~ ~ - -
\I
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
1.
\
.. , ...
\,
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 water-
craft 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 ~ x c e s s i v e 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 responsive-
ness 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 compris-
ing 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 thepropulsion means is
controllable by the user and is
substantially free from pivotal restraint
in the absence of such control."
3.
. ~
' '
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 ~ o n n e c t e d 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 surf-
boards, 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 dagger-
boards, 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,
4
- ~
't
~
"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
5.
- ,_
i, t
"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 c a p s i z ~ 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 modificat-
ions 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.
6 .
/
"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 there-
between.
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
7.
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
11
Crit 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.
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
9.
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".
1 0.
. .,
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.
that selling articles to
persons to be used for the purpose of
infringing a patent is not an infringe-
ment of the patent (per Fry, J.,
Sykes v. Howarth (1879) 12 Ch.D. at
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 himself a party
to the act of infringement (per Mellish,
L.J., Townsend v. Haworth (1875) 48 L.J.
Ch. at Dunlop Pneumatic Tyre
Co. v. David Moseley & Sons Ltd. (1904)
1 Ch. at pp.616,620). Further, in
11.
"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 participat-
ion 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
12.
r._ ..
I
'
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.
13.
t
"If you are in substance selling the
whole of a patented machine, I do
not think that you can save
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
14
"'
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
16.
t
"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 ~ a n s 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.
17.
t
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.
18.
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
18.
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 so-
called 'pith and marrow of the
claim. _ A patent specification
should be given a purposive
construction rather than a purely
literal one derived from applying
to it the kind of meticulous verbal
analysis in which lawyers are too
often tempted by their training to
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
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 circumstan-
ces 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 i t ~ 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 r o t a t i o ~
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 t h ~ 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 ~ e a l 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
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 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 forthe 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
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
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 b a c ~ 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 evidence 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 (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 ~ g u e word
'substantially' as sufficient to over-
come 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 interpretat-
ion 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 manufac-
tured 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 notwith-
standing 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 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 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 d e p i c t ~ 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

are not, I think, essential features.
The plaintiffs' present joint, which is constructed
somewhat differently and makes use of a plastic knuckle instead
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' 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
thealleged 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 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 manufactur-
ing 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 (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
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

(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 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 ~ e l l .
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 some-
thing 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
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 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 ~ r t i c l e 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 ~ i t e 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
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 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 there 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 Bay" 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 a n ~
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 b o a ~
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
about details.
It was submitted for the plaintiffs that Mr. Eastaughs
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. Eastaughs
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 detail 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 coursethat 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 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. 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
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 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 ~ a t
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 ~ n t o 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 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. 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
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 M e s s r s ~
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
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,
"'""'""'"" . -' ... ...._,...._... ,_,._,.,..,..,..,._._...,.,,.,....,
..... - ,... \
'""'"'"'-'<''-'-' ____ ,..,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 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
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 h i ~ 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 s a m e ~ 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 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 t' ' ' . ' .
'! :,::; <,;,:, t:1e preceding pages
ar:::: a truE: c.:_ y f t; :: rec..so.1s for judgment
herein of his
Data: 1 {1.L _
ou .
123.