Ben Coogan

High court rigid in refusing appeal concerning the validity of tailings patents

Ben Coogan

12 July 2013


On 15 March 2013, the High Court of Australia refused to grant SNF (Australia) Pty Ltd (SNF) special leave to appeal a decision that SNF had infringed five innovation patents (Patents) owned by CIBA Speciality Chemicals Water Treatment Limited (CIBA), related to improving management of mining waste disposal (tailings).[1]


Typically tailings, made up of unwanted material dug up during mining process, are mixed with water and disposed of into repositories. However, separating water from the solid material is desirable: the water can be recycled and solid waste re-deposited after the mining process. The problem with tailings disposal is that treatment processes are typically inefficient and unsafe; finer waste particles remain in the water and heavier particles, solidifying quicker than lighter waste, cause instability in the solid waste structure.


The CIBA Patents described a process of using aqueous solutions of polymers as flocculants for treating the tailings. By applying these flocculants in a process called ‘rigidification’, both large and small waste particles solidify more quickly, enabling quicker release of water and safer re-deposition of the waste.


The original proceedings [2]


SNF brought proceedings against CIBA in the Federal Court of Australia (in mid 2011), seeking to revoke the Patents for invalidity.


SNF argued that there were three major bases of invalidity. First, that the Patents lacked novelty in light of prior patents and methods used in the Londonderry, Bulga and Beenup mines.  Further, that the Patents lacked an innovative step because they did not substantially contribute to the working of the inventions. Finally, that the Patents lacked utility because it was impossible to ascertain a benefit in using CIBA technologies. Ultimately, the trial judge (Justice Kenny) refused these claims, upholding validity of the Patents.


According to Justice Kenny, the Patents described processes which were novel in:


  1. Use of soluble polymers in an aqueous solution, as opposed to use as particles, in the rigidification process;
  2. Use of soluble polymers in an aqueous solution, as opposed to an oil emulsion;
  3. Improving rigidification, as opposed to simply outlining processes of settlement and sedimentation;
  4. Adding flocculants during transfer of waste material, rather than before transfer; and
  5. In effecting rigidification via stacking.



Justice Kenny further held the CIBA Patents did not lack an innovative step. The test of innovation involves asking whether a person skilled in management of mining waste disposal, in light of common general knowledge, would consider that the inventions varied from the prior art patents to make substantial contribution to the working of the invention. According to Justice Kenny the process of improving rigidification had significant advantageous over prior processes, in delivering more efficient and safer waste treatment.


Finally, Justice Kenny determined the Patents did not lack utility. Lack of utility required proof that the processes outlined in the patent specifications did not work or failed to fulfil the purposes specified in the Patents. SNF had not presented such evidence.


Importantly, Justice Kenny also determined SNF had directly infringed the CIBA Patents, in admitting supply of similar flocculants and technologies to the Bulga and Cowal mines. SNF had also directly and indirectly infringed the Patents in authorising Ashton Coal mine operators to use similar processes and supplying the flocculants. In the second case it was immaterial that SNF did not know the use of such processes would infringe CIBA Patents.


Appeal to Full Federal Court [3]


SNF appealed to the Full Federal Court of Australia, principally claiming that the trial judge had made errors in applying the innovative step test. It contended that the trial judge had incorrectly relied on expert opinion rather than evidence presented by ‘ordinary skilled persons’ in formulating her understanding of the rigidificaiton process. Further, SNF argued Justice Kenny did not consider the risks of the rigidification process, in determining that the process substantially contributed to the working of the inventions. The Full Federal Court dismissed the appeal, finding no error in Justice Kenny’s judgment.


Application to the High Court


The High Court refused SNF’s request for special leave to appeal from the Full Federal Court decision, because SNF had not shown that Justice Kenny or the Full Federal Court had made a principal error in deciding the innovative step issue. Notably, at the application for leave to appeal stage, the High Court did not necessarily consider all evidence presented by an applicant at the trial stage. By refusing special leave to appeal, the High Court accepted Justice Kenny’s application of the innovative step test, but may not necessarily have come to the same decision.


BASF get involved


Publicity of these proceedings was heightened by involvement of BASF, a chemical company. On 16 April 2013, BASF announced that the High Court of Australia had upheld that validity of its Rheomax ETD (Enhanced Tailing Disposal) innovation patents, and infringement of those Patents by SNF.


The announcement, widely circulated on various mining websites, suggested that if third parties used SNF’s products for disposal of mineral waste they would infringe BASF’s patents.


New Federal Court proceedings by SNF against BASF


SNF issued proceedings against BASF for misleading and deceptive conduct. However the matter was resolved, with BASF agreeing to republish a more accurate statement.[4] On 3 May 2013, BASF released a statement that the patents referred to in the High Court decision had subsequently expired, and that BASF had pending, but unregistered patents for the Rheomax ETD method in Australia.[5]


This case is evidence again that patents are just as hard fought for, as they are fought over. However, the subsequent proceedings by SNF against BASF shows that competitors need to be very careful in how they report on patent decisions, so as not to potentially mislead or deceive the public.


[1] SNF (Australia) Pty Ltd v CIBA Specialty Chemicals Water Treatment Limited & Anor [2013] HCATrans (15 March 2013).

[2] SNF (Australia) Pty Ltd v CIBA Specialty Chemicals Water Treatment Limited & Anor [2011] FCA 452.

[3] SNF (Australia) Pty Ltd v CIBA Specialty Chemicals Water Treatment Limited & Anor [2012] FCA 95.

[5] News Release by Communications Director of BASF, Eike Croucher, dated 3 May 2013.