Misfired – Dyno Nobel’s Invalidity Attack Fails to Detonate in Wireless Blasting Patent Dispute

Dyno Nobel Asia Pacific Pty Ltd v Orica Explosives Technology Pty Ltd [2025] FCA 767

Introduction

In a lengthy 1300+ paragraph judgment, Justice Downes has handed victory to Orica, finding that Orica achieved “almost complete success” in its infringement case regarding three of the four patents in suit, and that Dyno Nobel’s invalidity attacks failed completely as did its unjustified threats claim.

A key takeaway from this decision is her Honour’s robust criticism of the manner in which Dyno Nobel ran its case, with her Honour criticising both the changing nature of Dyno Nobel’s case and its expert evidence.  On the former issue, her Honour declined to make findings sought by Dyno Nobel in its closing submissions about any matter which was not pleaded by Dyno Nobel, if Orica objected and her Honour was not satisfied that Orica knew the nature of the case it had to meet at trial.  Her Honour also adopted a similar approach regarding one aspect of Orica’s infringement case which was not part of its pleaded case.  On the latter issue, her Honour’s significant concerns about Dyno Nobel’s expert evidence led her Honour to place little weight on this evidence, seriously undermining Dyno Nobel’s invalidity case.

Dyno Nobel has appealed her Honour’s decision.

In our article, we focus in on the key grounds alleged in the invalidity case against one of the four patents in suit (Australian Patent No. 2006225079), as her Honour’s findings in this regard highlight the key issues which led to Dyno Nobel’s failure to make out its invalidity case on this patent as well as the three other patents in issue.

Background

The four patents the subject of the proceedings were:

1. Australian Patent No. 2006225079 entitled “Wireless detonator assembly, and methods of blasting”. The claimed invention related to detonator assemblies that were substantially free of physical connections with an associated blasting machine and to improvements in the safety of these wireless detonator assemblies.
2. Australian Patent No. 2007246165 entitled “Wireless electronic booster, and methods of blasting”. The claimed invention related to apparatuses used for wireless blasting and methods of blasting using these apparatuses.
3. Australian Patent No. 2010207873 entitled “Selective control of wireless initiation devices at a blast site”. The claimed invention related to the control of detonators and detonator assemblies used in mining via wireless communication; and
4. Australian Patent No. 2010302943 entitled “A method of underground rock blasting”. The claimed invention related to an improved method of blasting of rock underground.

All four patents were subject to the pre-Raising the Bar version of the Patents Act 1990 (Cth).

The product in issue was Dyno Nobel’s “CyberDet I” wireless electronic detonators (CyberDet I Device) which had been used and supplied for use, in certain blasts at two Australian mine sites: the Big Bell Mine and AngloGold Ashanti’s Sunrise Dam Mine.

Dyno Nobel commenced the proceedings seeking to revoke the four Orica patents and alleging unjustified threats.  Orica countered by cross-claiming that CyberDet I Device infringed its patents.

Australian Patent No. 2006225079 – Key Issues

Novelty

In holding that none of the prior art cited anticipated the claimed invention, her Honour addressed the issue of the date at which the prior art is to be construed.  Dyno Nobel submitted that the prior art should be construed at the priority date of the patent in suit, while Orica argued that construction should occur at the date of publication of the prior art.  After reviewing the statutory provisions and the case law, Justice Downes held that when determining the degree of disclosure required to show lack of novelty, the prior art document must be construed as at the date of its publication.

Inventive Step

Dyno Nobel failed to prove lack of inventive step in light of the common general knowledge (CGK) alone and/or taken together with one of three cited pieces of prior art (namely, two patents and a company website).

Justice Downes found that the objective facts arising out of the evidence provided compelling support for a conclusion that the claimed invention was not achieved by mere “routine” steps, or that the skilled person would have been directly led to carry out particular steps in the expectation that a particular research path “might well produce” a useful result.  Rather, the objective facts demonstrated that:

• a skilled addressee seeking to develop initiation systems for the mining industry at the priority date would have considered the removal of wires from detonators to be counter-intuitive for a range of reasons, including that removing the wires, without more, would have removed one of the major benefits of an electronic detonator, being the ability to obtain status information from the detonator; and that introducing wireless communications would have introduced the concomitant risks of electromagnetic interference and inadvertent detonation; and
• to the extent that there was any focus on removing wires, the industry trend favoured wireless transmission to a receiver which contained components of the blasting machine and which in turn was connected to the detonator.  In its invention, Orica “bucked that trend”: instead of dividing the components of the blasting machine and having wireless signals between those components, it incorporated a receiver into the detonator assembly, with the blasting machine transmitting signals wirelessly to the detonator assembly (including to an assembly the components of which were separated to enable better receipt of the wireless signal).

When considering the question of lack of inventive step in light of the CGK taken together with one of three cited pieces of prior art, her Honour held that the evidence did not demonstrate a reasonable expectation that the skilled person would have ascertained and regarded as relevant the prior art documents.  Her Honour considered that, at its highest, Dyno Nobel’s patent search evidence established no more than that certain prior art documents were capable of being returned by a literature search, which was insufficient.  In reaching this conclusion, her Honour noted that:

• the contemporaneous real world evidence was significant in that each expert in this case was working in the field of improving electronic detonator design (and in Mr Boucher’s case, wireless electronic detonators) or wireless communications for use in mines before the priority date, and no expert was aware of any of the cited prior art (other than Mr Napier being aware of his own company’s website); and
• the manner in which the patent searcher was instructed bore little resemblance to the manner in which the evidence indicated that the searcher would have been instructed by the skilled person, and likely resulted in a broader search being conducted by the patent searcher than would otherwise have occurred.

Crucially, Dyno Nobel’s lack of inventive step case was substantially undermined by her Honour’s opinion of the weight that could be given to its expert evidence.

Justice Downes noted that Dyno Nobel’s case depended significantly on the acceptance of expert evidence given by Mr Boucher and Mr Napier.  Her Honour was unable to place much weight on Mr Boucher’s evidence because her Honour considered that:

• Mr Boucher had misunderstood the concept of CGK, as his evidence indicated that he had wrongly assumed that publication of information was sufficient for the information to be CGK (on the basis that it should have been known), even though he was not aware of this information before the priority date;
• Mr Boucher was not representative of the hypothetical, non-inventive PSA as he was too highly qualified and too inventive;
• Mr Boucher had expressed opinions (including during the trial) based upon the evidence of other experts and the extent to which this occurred was not known; and
• the hypothetical task given to Mr Boucher went beyond the CGK, and was leading because it assumed a starting point (wireless electronic detonators) that the skilled person would not have been motivated to attempt to design based on the expert evidence.

Her Honour was also unable to place much weight on Mr Napier’s evidence because her Honour considered that:

• Mr Napier did not have expertise in the relevant technology, being electronic detonators or detonator technology;
• Mr Napier’s evidence was infected with personal knowledge of facts derived from his work which were not CGK; and
• Mr Napier indicated that his experience with a particular system would have impacted (i.e. biased) his response to the hypothetical task that was posed to him.

Best Method

Dyno Nobel alleged that Orica had failed to disclose the best method of performing the invention.  Her Honour held that this ground was not made out.  In reaching this conclusion, her Honour was again highly critical of Dyno Nobel’s pleading and evidence noting that:

• Dyno Nobel’s best method case was premised on an incorrect characterisation of the invention;
• Orica was only apprised of the full particulars of Dyno Nobel’s best method case during closing submissions.  Consequently, her Honour only considered the best method case which Dyno Nobel pleaded and opened on at the trial, not the case advanced in closing submissions, as in her Honour’s view to do otherwise “would be contrary to the interests of justice to permit it to succeed”;
• Dyno Nobel’s best method case relied upon Mr Boucher’s evidence, and, in particular, his incorrect understanding of the concept of CGK.  To make matters worse, her Honour also considered that Mr Boucher had conflated the requirements of US patent law with Australian patent law regarding what is required to be disclosed in a patent in Australia; and
• Given the low quality of Mr Boucher’s evidence, it was not surprising that Orica did not call any inventor or author of the particularised Orica documents.  Her Honour considered it to be self-evident that doing so would have run the risk that the assumptions underlying Mr Boucher’s opinions could be established through cross-examination of these witnesses.  Accordingly, her Honour declined to draw any adverse inference from the failure by Orica to call such persons as witnesses as there was an obvious forensic reason not to do so.

Her Honour also considered that Orica was not required to disclose idiosyncratic features of the voltage step-up or multiplication means which it had selected for use in its commercial embodiment of the invention.  This selection depended on the particular commercial product being built, and the componentry used elsewhere in the product, all of which was likely to be adjusted in the course of product optimisation.

Outcome and Implications

Justice Downes held that Dyno Nobel’s validity attacks failed completely as did its unjustified threats claim.  Orica, on the other hand, achieved “almost complete success” in its infringement case regarding three of the four patents in suit.

Her Honour’s decision is a salient reminder of the importance of clearly pleading a party’s case so that the other party is on notice of the case it has to meet.  Her Honour’s decision also highlights the central importance of expert evidence, the deficiencies of which in this case significantly undermined Dyno Nobel’s invalidity attack on the four Orica patents in suit.

Dyno Nobel has appealed her Honour’s decision.

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