Prof. Dr.-Ing. Klaus Schonert (1927 – 2011) – The Loss of a Real Inventor

It was sad to hear the news that Klaus Schonert passed away on the 24^th September 2011. I doubt if any individual has contributed more to the advancement of comminution, energy savings and minerals processing over the last 40 years and maybe we will struggle to find someone to compare over the next 40 years. His patent ”Method of Fine and Very Fine Comminution of Materials Having Brittle Behavior” (US patent) is revolutionising the way we undertake size reduction and is now represented by the High Pressure Grinding Rolls (HPGR’s).

I had met personally with Klaus Schonert only about a dozen times but was always struck by the practicality of this Emeritus Professor. I first met Schonert briefly at the University of Clausthal at the end of the 1980’s whilst researching HPGR’s for Billiton. However my first real discussions with him were after I’d joined KHD, at the Sydney IMPC in 1993. To my astonishment and pleasure he spent many hours with me at the KHD exhibition stand where we discussed, amongst many things, how to get the HPGR’s (KHD’s Roller Press and Polysius’s POLYCOM) accepted into the minerals market. There had been an immediate and rapid uptake in the cement industry. The entry into the minerals market was more challenging, mainly due to the increased wear associated with wet metallic minerals.

Whilst in our profession of minerals processing we have been blessed with a number of highly acclaimed academics and researchers, who have contributed immensely to our understanding of fundamentals, few if any, have been able to produce something really practical and usable. Schonert was somebody who did this with the High Pressure Grinding Rolls.  From fundamental research into single particle breakage in the 1960’s through to inter-particle breakage in a particle bed in the 1970’s and his work with piston presses he noted, contrary to conventional wisdom, that much higher pressures increased the efficiency of breakage. Up to this time high pressures were avoided as they were thought to agglomerate the particles and thus have a negative effect on comminution and increase the energy requirements for size reduction.  For a full description of these developments see “The History of Grinding” by Alban Lynch and Chester Rowland (SME 2005) where Schonert himself describes these developments.

The fundamental research was impressive. However the genius was indentifying a way the concept could be transferred to a practical industrial method. Schonert identified that briquetting and compacting presses had the basic pre-requisites but were used for particle agglomeration, not comminution. These machines had been around for many decades. They consisted of two counter rotating rolls, either smooth for compaction into flakes or with a surface profile design for the manufacture of briquettes.  Generally the pressure applied to form the agglomerates was with metal springs. Next, he realised that no one had connected this with size reduction and it was therefore patentable. What followed in the next 10 years was the most intense patent litigation seen in our industry between licensees of the Schonert patents and those companies who had compacting technology and saw it as “obvious” that it could be now used for size reduction.

Schonert originally non-exclusively licenced his patents to Polysius, a German based equipment supply company. It’s interesting that Polysius did not have any prior briquetting/compaction technology and had to develop things from scratch. Their design applied the high pressures required by pistons against the bearing housing of one set of rolls. Soon after in 1979 KHD, another German based equipment supply company, who did have briquetting/compaction technology initiated opposition proceedings to Schonert’s German patents.  After much wrangling Schonert, Polysius and KHD agreed that KHD could also have a non-exclusive licence if it dropped its patent opposition. Also that both Polysius and KHD had a right of veto of any new licences and that Schonert, Polysius and KHD would work in collusion in enforcing the Schonert patents, with Polysius and KHD jointly sharing the cost of such enforcement.

This agreement to defend the intellectual property led to the most intense and complex litigation ever seen in the mineral processing equipment supply industry and is still referred to and studied in general patent case law today.  There were a few international litigation actions but the principle one was between Polysius and the Fuller Company of the USA. In this case Fuller (later being taken over by FLSmidth in 1990) was charged with patent infringement. It counter sued with a defence of “patent invalidity, patent misuse and fraud of the patent office”.  In addition, Fuller also counter claimed and sought damages for “alleged anti-trust and other unfair competition violations” in the USA.

The Pennsylvania District Court handed down its judgement on 3 February 1989, which was subsequently upheld in the United States Court of Appeals, Federal Circuit on 12 October 1989. The courts found in favour of Schonert and Polysius, upheld the validity of the patent and dismissed all anti-trust claims made by Fuller. The judgement and opinion of the courts makes excellent reading for anyone who has an interest in the technology or IP protection. The full transcript can be viewed in this link;

http://www.leagle.com/xmlResult.aspx?page=1&xmldoc=19891269709FSupp560_11164.xml&docbase=CSLWAR2-1986-2006&SizeDisp=7

The transcript is interesting as it records not only of the technicalities and legalities of the applied patent law but because it also details claims of industrial espionage and subdiffusion and also has many references to Taggart. Maybe it’s the good basis of a thriller film! 

The court case also highlights the enormity of the reputation of Professor Klaus Schonert. From the judge; 

“....no one except Schonert had the genius to combine the separate elements into the teaching of the ‘287 patent”.

“The most telling objective indicator.... is that the Fuller engineers, when they heard of that “German professor”, did not go to Taggart or any other prior art cited by Fuller in this case. Instead Fuller’s engineer went directly to that “German professor”.

The judge also made much of Schonert’s  Gaudin award from the SME.

“I am convinced that Schonert’s peers placed him on a high pedestal for the invention of the process“.

“Schonert is a scholar of high repute”.

“I find that Schonert is a scholar of the first order (and) that his testimony is highly credible”.

This is high praise not normally dished out by a high court judge in judgement!

I guess that Schonert was tied in by Polysius and KHD with the licence because you would expect it to be more beneficial to him to have more licensees. But I know he didn’t do too badly out of his patents. In German law the IP/Patent rights reside with the inventor/academic, not with the university as his employer. During my time at KHD in the 1990’s I was tasked with checking the annual calculation of sales of the Roller Press and Schonert’s 3% licence fee. It was not an inconsiderable amount. Bear in mind that also Polysius were selling a similar amount of HPGR’s.  I understand though that Schonert gifted much to the university to fund departments and research.

Despite having such an involvement with HPGR’s  it was about 25 years after the event it suddenly dawned on me about my first encounter. In the early 80’s during my graduate training with Anglo American Corporation in South Africa I spent some months with De Beers. One of my boring tasks for a few weeks was to do sieve screen size analysis. I remember that the labels referred to something like piston press samples. I did not know at the time that De Beers were investigating Schonert’s work for the liberation of diamonds from kimberlite without breakage. Subsequently De Beers installed the first four HPGR’s in the minerals industry at Premier Diamond Mine.

Small world!

The Value of Patents in Mineral Processing

Patents and intellectual property rights seem to have dominated our thoughts at MMS in the last few weeks. We have recently been in the Court of the European Patent Office in Munich to successfully defend a submission by a competitor to cancel our granted Imhoflot pneumatic flotation patent on the grounds of prior art.

Then, to our good fortune, the current British government coalition confirmed plans in the budget last week to introduce a preferential regime for profits arising from patents. To be known as a “Patent Box” the intention is to introduce a 10% corporation tax rate on profits arising from patents from 1 April 2013. It is hoped that the Patent Box will encourage international companies to locate high value jobs and activities associated with the development and exploitation of patents to the UK. Next year’s UK corporation tax rates will be 26% for companies with profits above £300k and 20% on amounts below that figure. There are already a few countries that offer a similar system of domiciled companies – The Nederland’s and Spain are two examples.  As just about all MMS’s revenue and profits can be attributed to our patents this is very welcome news for us.

So, assuming it does work out and we are still profitable, we will finally see a tangible return on all our efforts. This will be good, because the money we spend on developing, applying for and maintaining patents is quite a considerable amount of our non operating expenses. After so many years of maintaining patents you do question their value.

On a purely self satisfaction basis the 17^th March 2011 will go down as one of the better days for MMS. We had been summoned to the Opposition Court of the European Patent Office in Munich to defend our granted Imhoflot pneumatic flotation patent against a claim of prior art by our competitor, KHD Humboldt Wedag.  MMS won a glorious victory! The court found in favour of MMS and the Imhoflot patent and declared all our patent Claims both novel and inventive.  The court dismissed all allegations of prior art by KHD. Each Claim for both points of novel and then inventive where attacked by the opposition patent attorneys and expert witnesses and then defended by our attorney with expert witness coming from the inventor, Dr Rainer Imhof. There was simultaneous translation of English and German. We then all had to leave the room for each decision for the court to deliberate (chairman, technical patent examiners and legal counsel). The chairman then read out the verdict and we moved on to the next Claim for deliberation. Actually waiting for the verdict was as nerve racking as I would have thought it was like at a murder trial; guilty – not guilty! When all the decisions started going in our favour the opposition attorneys then tried a few legal tricks. The best way I can describe it is as entrapment, where they got us to verbally declare something, then claimed to the court non disclosure of method. Luckily the court was having none of it. Apparently these sort of challenges to granted patents are rare. However going through the process has certainly given us the best experience in knowing how to frame future patent applications. I have to say that the opposition attorneys did themselves no favours by “challenging” the decisions of the court when they were going against them. For those who remember, think of John McEnroe in his early days at the tennis – “you cannot be serious!”  Thanks must go to our excellent patent attorney, Michael Spencer of Bromhead Johnson in London. Michael has been our patent legal advisor since the start of MMS. We celebrated with sausages, sauerkraut and beer!  The Court was open to the public and all the proceedings and outcome will be published by the EPO.

Why have patents? There are people who say that all patents can be got around. Certainly I can see that in the approval stage, with bottomless pits of funding, big organisations can outspend smaller ones to deny patents, unless they truly are unique, inventive and novel, there is no prior art and you’ve done all the right legal things to get there. MMS started with patents initially to protect ourselves when we started up. It’s one of those quirks of German patent law that if the owning company decides not to maintain a patent, by law they have to offer it back to the inventor. This is what happened to us. A number of Dr Imhof’s previous patents were given up by the owning company and he took them over. This allowed us to enter the flotation market without fear of challenge of our technology. Since then MMS has come up with quite a range of new ideas and processes and where we have applied for patent protection it has always been granted.

The European Patent Office estimated that an average cost of obtaining a European patent and maintaining the patent for a 10 year term was around €32,000. So it is not a cheap route to go down simply for the kudos. In addition, the costs of International Patent Cooperation Treaty (PCT) applications and then validation in each and every country you require the patent, possibly including full translation, adds considerably to the initial and annual costs.

The idea of a patent is that it is a legal barrier to others to do the same for a set period of time. However, we can see that if some big company with the resources and deep pockets wanted to do the same or get around them they probably would. We see them more as a marketing tool to demonstrate our inventiveness and cleverness, and therefore by default, that our equipment or process is improving on existing technology in terms of performance, capital and operating cost.  Whilst corporately all companies will be wary of infringing patents it does not stop individuals in such companies giving it a go. We have come across quite a few instances with our and other technology where individuals in companies think they can do it better or cheaper than the patented technology. The desire to do this I think probably comes out of boredom in their job requirements and their need to utilise their abilities, or it may be just the belief that they can save their company money. These “reverse engineering” projects on our technology, which almost certainly are not know by corporate management, have come to our attention always because they have failed badly and then been attributed to us i.e. your process doesn’t work!  This is a situation that gives damage to reputations and is difficult to control.

One area where patents do help is that competitor companies become wary of infringement or the perception by customers of infringement which does help the original inventing company in getting the product into the market by differentiation of product.  A study in the USA showed that the average legal cost of a patent infringement case that comes to trial is over $1million. So if you are the patent owner you need to be really sure that you will win an accusation of infringement and get your costs awarded against the infringer, or the patents could become even more costly!

Inventions to Order?

Through MEI and Barry Wills’ blog the question has been asked by a supplier – is there need and/or desire for a new type of crusher?  This supplier is trying to evaluate if it’s worth spending the time, energy and more importantly, money to develop a new type of crusher. The lack of feedback on the so far from the MEI blog might indicate that this is a difficult area to develop something!  However it does beg the question – Can you invent to order?

Looking at the minerals industry and its structure, it’s very difficult. Having said that our company MMS was founded on exactly that; an inventor (Dr Rainer Imhof) who could invent equipment and develop processes to solve particular problems. Rainer wasn’t the original developer of pneumatic flotation (Bahr, Simonis) but to getting it working to a commercial level he has had to come up with a number of new inventions to solve particular problems. These are unique enough to allow MMS to patent. It doesn’t happen very often but on a few occasions Dr Imhof has (half jokingly) been asked to invent things and then come up with a solution. “Rainer could you find a solution to this xxxx problem!” He has gone away thought about it and then, a few times, come up with an elegant idea. A couple of these recent ideas MMS are in the process of trying to develop at the moment.

There are many people involved in “R&D” in our industry  but very little invention seems comes out of it. Most is focused research but rarely achieves any usable beneficial outcomes. The MEI blog has recently highlighted the amount of poor technical papers being submitted to MEI on Hydrometallurgy where the same old things have been regurgitated over and over. We as a company see it time and time again and wonder why the work was ever done. This is not just limited to academia, we also see it across the board in mining and processing government research organisations.

Money doesn’t seem to help (although we’re sure it would help us as a company). A major multinational corporation has recently tried to move into new business areas in fields not unrelated to our market so of course, we are interested in what they do. They seem to have a bottomless pit of money (many $m), resources and support to throw at trying to get their product introduced. They have even go so far as paying operations to have their equipment to be installed. This has happened in the past with limited success (think of mining companies with technology divisions). Without a workable product that people want, even money “can’t buy you love”.

There is the “light bulb” moment when someone sees the light, generally in an area unrelated to their field of expertise (ask Dr Imhof about his idea for keeping tennis balls fresh!). You just have to hope there is a market for your idea and that someone will try and commercialise it. Generally, this rarely happens. Again, as a company, we are often presented with such ideas by inventors. Almost invariably it is a great idea but with little commercial potential. Most process equipment ideas we see fall down on scalability – the requirement for high unit throughput in the minerals industry to make equipment economic. 

Back to the crushing problem. Yes, there have been no step change inventions in crushing over many decades, only incremental improvements in reducing costs by increasing unit throughputs and availability, reducing maintenance and increasing wear life. It is an extremely mature and tightly kept market. The potential savings on a new type of crusher appear limited. As crushing is relatively low energy (compared with say milling or ultra fine grinding) potential energy savings of a new type of conventional crusher will not make too much difference in the big picture. So we would see the only way for a new entrant to get into the market (obviously not this supplier who asked the question) is to copy the best bits of the current state of the art, try and improve on these incrementally and manufacture in a low cost country.

On the other hand it’s not actually “crushing” that the industry wants but “rock breakage”. Now there are any number of research projects out there (being done by the same researchers lambasted above!) trying to find the answer to more efficient and cost effective breakage – heating, cooling, microwaves, ultrasonic and other type of wave spectrums, electrical pulses, explosions etc. Now if any of these could be commercial at required unit throughputs then that would be a paradigm shift in the industry.

Dragon's Breath at the Mining Indaba in Cape Town

MMS attended the Mining Indaba in Cape Town this week (7 – 11 February). The Indaba is essentially a mining finance conference along the lines of PDAC, Mines & Money, Diggers & Dealers etc. in other countries, but focused on Africa.  Presentations are generally split between economic/finance and mining company presentations. The accompanying exhibition is again split between mining companies promoting their company and projects and service companies looking for business from mining companies. In amongst all these are the normal government agencies and NGO’s plying their trade.

Mineweb's Jan Chadwick & Lawrie Williams showing of their website on an iPad

MMS attendance is aimed at influencing senior executives with suitable projects in an early stage in directing their technical staff and consultants towards the commercial benefits of investigating state of the art technology.  We find this has to be relayed “top down” as well as from the “bottom up” to get any acknowledgement. In addition the consultants and engineers who generally undertake the scoping studies and prefeasibility studies where flowsheet decisions are already set need to be fully versed with the technology. We certainly don’t expect them to recommend new technology but we want them to know about it so they can at least not look surprised in front of the mining company!

The 2011 Indaba was one of the biggest with over 5000 registered delegates. As always with these things there was as much business done outside the conference in the many cocktail parties and events as there was in the Cape Town convention centre. As for outcomes; you couldn’t fail to notice the huge potential for new gold and iron ore operations in West Africa. From the economists what we could gather was that high metals prices were here for the foreseeable future. One Keynote Address we attended given by James Turk of GoldMoney claimed that gold was again going to be the standard that all currency was based on (without government’s ability to just print more) and that gold would be USD8000/oz in the near future. I had to check with others that I heard that number correctly!  He had all the historical charts and figures to back up his predictions. Now that would be an interesting price. I think we will be out mining for gold in Wales again.

Another area highlighted by the conference was the acknowledgement of responsibilities to the environment and sustainability by mining companies. Well, they doffed their hat to it anyway. There was a lot of interest in our low cost cyanide destruction process (soon to be commissioned at Randgold Resources new Tongon operation in the Ivory Coast). Also the legacy of Acid Mine Drainage from operations, which is highlighted by what is currently happening in the mined out Witwatersrand in Johannesburg.

Maelgwyn Mineral Services Africa Technical Director - Adrian Singh together with Ian Townsend of Outotec enjoying a glass of Cape wine after a long day at the conference.

We got to talk to a large number of mining executives who had potential sulphide gold projects or projects involving flotation. To be fair, they just about all listened to what we had to say and some even took notes when we outlined the cost benefits. We also had some really good discussions with the engineering and consulting companies present. So lots to follow up on in the coming weeks.