Case: Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2004) 66 IPR 420
Outcome: considered
As noted by Bennett J in Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2004) 66 IPR 420 at 433, the requirements in the patent specification in relation to 'narrow waisted' are: &#8226; 'SWATHs are catamaran type vessels where those parts of the hull located beneath the surface of the water are joined by narrow connections. Such vessels have a narrow hull waist, or narrow cross section, at the water line. &#8226; The cross sectional shape of the hull shapes of the claims throughout a substantial portion of the forward half of the hull has a bulbous underwater part and a narrow waisted part which extends through the water line. &#8226; The hull construction of the claims comprises a forward hull part which has a bulbous underwater cross section. That is, the hull width is narrower in the region of the water line than both above and below the water line. There are numerous references to the bulbous shape. For example, 'pronounced bulbous shape solely at the foreward part of its underwater body'. The bulbous shape of the forward part of the hull cross-section a relatively narrow hull width in the vertical region of the hull extends up through the water line. &#8226; The figures, in particular fig 1, show the bulbous shape underwater and significant waisting at the water line. &#8226; The hull is described in such a way as to indicate to the skilled reader that the forward part is SWATH-like. There is a specific reference to the link between the area above the water line and a characteristic of SWATHs' 40 Austal says that the expression 'narrow waisted', which is interrelated with the other requirements of integer 1.6, is also obscure and capable of diverse meanings. 41 It is noteworthy that the reference is to a waist which is narrow. Not all waisting can of course be described as 'narrow'. It is common ground that the degree of waisting of the preferred embodiment in Figure 1 (expressed as a percentage of the forward half of the hull which is narrowed or waisted) is as follows: &#8226; 85% narrowing at 40% of the forward half of the hull; &#8226; about 79-80% narrowing at 50% of the forward half of the hull; &#8226; 62% narrowing at 80% of the forward half of the hull; &#8226; about 42% narrowing at 100% of the forward half of the hull; and &#8226; 23% narrowing at 120% of the forward half of the hull. 42 On an ordinary grammatical reading, waisting can occur when lines are merely not parallel. As a matter of language, the expression 'waisting' requires only a discernable narrowing. However, given that the expression at issue here is 'narrow waisting', I agree with Bennett J that the expression 'narrow waisting', on its correct construction, means a 'significant narrowing': see Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2004) 66 IPR 420 at 433-434. 43 Mr Soars agreed that a hull with an underwater bulb which, at the waterline at 50 percent of the forward half of the hull, is waisted at little more than 20 percent would be profoundly different to the preferred embodiment in its ability to dampen the pitching of the vessel. Such a hull would have only one quarter of the waisting of the preferred embodiment at 50 percent of the forward half of the hull (that is, 20 percent waisting compared with 80 percent). Although Mr Soars ultimately put the requirement as being any waisting in excess of 20 percent, Austal notes that in cross examination Mr Soars referred to the expression 'narrow waisted' as being a vague one. By contrast, Mr Quigley considered that a vessel could not be a SWATH style vessel unless it had a waisting of at least 70 percent. He added that he had never seen a SWATH with only 20 percent waisting, stating that although he was unable to determine from the claims of the specification a precise percentage for the narrow waisting, a significant narrowing of the waist would require at least a 50 percent narrowing of the maximum underwater hull width. Accordingly, Austal submits that that degree of waisting, on the language of the claim, must be more than 50 percent. 44 The difficulty with the evidence of Mr Quigley is that he has regard solely to the SWATH-type characteristics of the vessel. He has given insufficient weight to the hybrid nature of the hull design issue in suit. In my view, a narrowing of the waisting in the order of 20 percent or more could be said to be a significant narrowing. I accept the evidence of Mr Soars on this point. 91 Other witnesses called for Austal were also unsatisfactory on this question. Mr Wagner's evidence neither relates to the issues in dispute in these proceedings, nor is based on any work done in Australia relevant in this case. Moreover, the designs with which he is familiar differ from the hull in the claimed invention. Mr Black's evidence suffers because he is not an independent witness, employed as he is by Austal, and because he was aware of the patent and had been involved in its opposition. Indeed, it is revealing to note that Mr Black described the similarities between the Austal 94 hull form and the patent claims as 'too close for comfort!'. His evidence that the expression 'narrow waisted' refers to any waisting whatsoever has already been rejected by Bennett J, with whom I agree at [42] above: see A ustal Ships Pty Ltd v Stena Rederi Aktiebolag (2004) 66 IPR 420 at 433-434. In addition, he refers to the concept of 'semi-SWATH', which indicates that his knowledge was affected by information obtained after the priority date. 92 The evidence of Mr Norman for Austal was also unsatisfactory. His evidence does not address the developments in Australia at Austal between the design of both Austal 14 and Austal 18 in 1990 and the design of Austal 94. It is significant to note that no evidence was adduced by Austal to explain the steps which were taken to arrive at the design of the Austal 94, despite the apparent availability of this information. 93 Austal relied on the "Patria", which was a modified SWATH in operation before the priority date, as an example of a vessel with SWATH-type features which could be suitably modified to solve the problem addressed by the patent. The "Patria", however, is classified as a SWATH vessel and the evidence indicates that its design and use of propeller propulsion created problems at speed. This indicates that any attempt to modify the "Patria" design would require significant design modifications in order to accommodate some form of water-jet propulsion in order to achieve speeds above 30 knots. While the "Patria" may have had good seakeeping features, this was achieved at the expense of speed, which is a critical element in the problem the invention was designed to meet. It should be noted that when Mr Quigley initially dealt with the question of obviousness, he made no reference whatsoever to the "Patria". This lends support to the conclusion that it was not a type of vessel which readily came to mind when considering the question of obviousness.