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[2015] ZASCA 10
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Mantella Trading 310 (Pty) Limited v Kusile Mining (Pty) Limited (191/2014) [2015] ZASCA 10; 2015 BIP 1 (SCA) (12 March 2015)
THE
SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
CASE
NO: 191/2014
Reportable
In
the matter between:
MANTELLA
TRADING 310 (PTY)
LIMITED
..................................................................
Appellant
and
KUSILE
MINING (PTY)
LIMITED
.................................................................................
Respondent
Neutral
Citation:
Mantella Trading v Kusile
Mining
(191/2014)
[2015] ZASCA 10
(12
March 2015).
Coram:
Navsa ADP, Bosielo & Wallis JJA
et
Schoeman & Dambuza AJJA
Heard:
17 February 2015
Delivered:
12 March 2015
Summary:
Patent – alleged infringement in relation to patents involving
barriers or stoppings in underground passages in mines
–
challenge on basis of lack of clarity in patent specification and
that the patent in suit lacked an inventive step –
interpretation of patent claims – construed contextually –
inquiry into obviousness – simplicity no bar –
combination of known techniques held to involve creative ingenuity.
ORDER
On
appeal from
: The Court of the
Commissioner of Patents (Makgoka J sitting as court of first
instance).
The
following order is made:
1. The appeal is
upheld with costs, including the costs of two counsel;
2. The order of the
court
a quo
is set aside and substituted with the following:
‘
(a)
The defendant’s counterclaim for the revocation of South
African Patent Number 98/7391 is dismissed;
(b) The defendant is
interdicted from infringing South African Patent Number 98/7391 by
making, using, exercising, disposing or
offering to dispose of, or
importing barriers or stoppings in particular barriers or stoppings
in underground passages, a method
of erecting such barriers or
stoppings in an underground passage, or a kit for erecting a barrier
or stopping in an underground
passage which fall within the scope of
the claims of South African Patent Number 98/7391;
(c) An order is
issued:
(1)
directing an enquiry as to the damages suffered by
the Plaintiff as a result of the defendant’s infringement of
South African
Patent Number 98/7391 and directing the payment by the
defendant to the plaintiff of the amount of damages found to have
been so
suffered;
(2)
directing that such enquiry shall take place in
accordance with the procedure agreed upon by the parties; and failing
such agreement,
authorising either of the parties to make application
to the Court of the Commissioner of Patents for directions in regard
to the
enquiry.
(d) A certificate of
contested validity is issued in respect of claims 1, 16 and 31 of
South African Patent Number 98/7391 as provided
for in section 74 of
the Patents Act 57 of 1978.
(e) The defendant is
ordered to pay the costs of the action.’
JUDGMENT
Navsa
ADP (Bosielo & Wallis JJA
et
Schoeman & Dambuza AJJA
concurring):
[1]
The primary issue in this case is whether a barrier used to create a
ventilation passageway constructed and installed by the
Respondent
company, Kusile Mining (Pty) Ltd (Kusile), in an underground tunnel
at its Khutala Colliery in Ogies infringes the Appellant
company’s
Patent No.98/7391, entitled ‘An underground Barrier’. The
patent concerns barriers or stoppings and,
in particular, barriers or
stoppings in underground passages; a method of erecting such barriers
or stoppings in an underground
passage; and a kit for erecting a
barrier or stopping in an underground passage. I shall refer to the
appellant as Mantella. The
second enquiry is whether the patent in
question is liable to revocation on the following grounds:
(i) that the claims
of the patent are not fairly based on matter disclosed in the patent
specification;
(ii) that the claims
of the patent are unclear;
(iii) that the
patent specification does not sufficiently describe, ascertain and,
where necessary, illustrate and exemplify the
invention and the
manner in which it is to be performed in order to enable the
invention to be carried out by a person skilled
in the art;
(iv) lack of an
inventive step in that it would have been obvious to a person skilled
in the art, having regard to matter which
formed part of the state of
the art immediately before the priority date of the invention.
[2]
Typically, barriers or stoppings in underground passages in mines are
utilised to enable fresh air to make its way to working
areas
underground, and to extract stale air. As a result of mining methods
used in underground coal mines the vast majority of
ventilation
barriers are used in underground coal mining operations. As mining
progresses through an area in a grid pattern it
results in a large
number of criss-crossing open passages. For obvious reasons,
including air supply and cooling, fresh air must
be supplied to
workers in the working areas. In order for fresh air to reach those
areas, it must flow from air ventilation openings
through the mined
areas to the working areas and stale air must flow back to the
ventilation opening to be expelled from the mine.
It is such passage
ways created by the barriers or stoppings that are the subject of the
present appeal.
[3]
In an action instituted by Mantella, it was claimed that Kusile was
using or exercising a method of erecting a barrier or stopping
in an
underground passage that incorporated essential features of the
registered patent, thus rendering the latter guilty of infringement.
In its plea, Kusile denied the infringement and in its counterclaim,
in terms of which revocation of the patent was sought, Kusile
set out
several bases for revocation.
[4]
First, Kusile alleged that the patent was invalid and liable to
revocation in terms of s 61(1)(
f
)(ii),of
the Patents Act 57 of 1978 (the Act) as the invention’s claims
were not fairly based on the matter disclosed in the
specification.
In this regard Kusile pointed out that each of the claims of the
patent included, directly or indirectly, the feature
that the
flexible panels, which are an integral part of the barriers supplied
by Mantella, comprised a plurality of adjoining sheets
of a ‘rigid
material’. Kusile contended that there was no further
description of ‘rigid material’ and no
disclosure of how
the joining together of sheets of the ‘rigid material’
rendered the panel flexible. In addition,
Kusile asserted that there
was no disclosure of how a sheet of ‘rigid material’ was
rendered flexible or bendable in
one dimension through the
incorporation of a profile. All these factors, so it was submitted,
had the result that the patent specification
was liable to revocation
in terms of s 61(1)(
f
)(ii).
[5]
Second, Kusile adopted the view that the patent was liable to
revocation in terms of s 61(1)(
f
)(i)
of the Act, in that it lacked clarity. In support of this view Kusile
stated that the patent specification did not clarify
what was meant
by ‘rigid material’. Kusile went on to state that it was
unclear how the incorporation of a profile
in a sheet of ‘rigid
material’ rendered an unattached sheet flexible or bendable in
one direction.
[6]
The third basis for revocation was that the complete patent
specification does not sufficiently describe, ascertain and, where
necessary, illustrate and exemplify the invention and the manner in
which it is to be performed in order to enable the invention
to be
carried out by a person skilled in the art of such invention. This
ground is based on s 61(1)(
e
)
of the Act. In elaboration, Kusile essentially repeated what is set
out in the preceding paragraphs. As can be seen these grounds
of
attack have a common theme, namely the lack of clarity in relation to
the expression ‘rigid material’ and that the
patent
specification is unclear about how profiling the material renders it
flexible in one dimension.
[7]
The last ground of revocation was that the invention claimed in the
patent lacked an inventive step, in that it would have been
obvious
to a person skilled in the art, having regard to matter which formed
part of the state of the art immediately before the
priority date of
the invention. In this regard a number of patents registered in the
United States of America were relied on. This
ground of revocation
was based on s 61(1)(
c
)
read with s 25(10) of the Act.
[8]
Makgoka J in the court below recorded the independent claims of the
patent on which the dispute turned, namely claims 1, 16
and 31, with
the essential integers indicated. For convenience I set them out
hereafter:
‘
Claim
1
A method of erecting
a barrier or stopping in an underground passage, the method
including:
(a) erecting a
support structure between walls of the underground passage; and
(b) attaching at
least one flexible panel to the support structure such that it spans
the underground passage at least partially,
the panel or panels thus
providing a barrier or stopping in the underground passage;
(c) in which the or
each panel comprises a plurality of adjoining sheets of a
rigid
material
;
(d) the method
including joining the sheets together by providing a seam along
adjoining edges of each sheet;
(e) engaging the
seams of adjoining sheets with each other; and
(f) rolling the
seams closed thereby joining the sheets in a substantially airtight
fashion prior to attaching the panel to the
support structure.
Claim 16
A barrier or
stopping in an underground passage, the barrier or stopping
including:
(a) a support
structure located between the walls of the underground passage; and
(b) at least one
flexible panel attached to the support structure and spanning the
underground passage at least partially;
(c) in which the or
each flexible panel comprises a plurality of adjoining sheets of a
rigid material
;
(d) adjoining edges
of the sheets being joined by a seam along each adjoining edge of one
sheet which engages a seam along the adjoining
edge of an adjoining
sheet;
(e) the seams being
rolled flat to provide a substantially airtight joint; and
(f) in which the or
each flexible panel includes at least one profiled sheet of a
rigid
material
;
(g) with the profile
of the sheet rendering an unattached sheet flexible or bendable in
one dimension.
Claim
31
A kit for erecting a
barrier or stopping in an underground passage, the kit including:
(a)
at least one elongated support member securely
mountable between opposed walls of an underground passage; and
(b)
at least one flexible panel, attachable to the
support member and capable of spanning the underground passage at
least partially;
(c)
in which each flexible panel comprises a plurality
of adjoining sheets of a
rigid material
;
(d)
adjoining edges of the sheets being joined by a
seam along each adjoining edge which engages a seam along the
adjoining edge of
an adjoining sheet;
(e)
the seams being rolled flat to provide a
substantially airtight joint; and
(f)
in which the or each flexible panel includes at
least one profiled sheet of a
rigid
material
;
(g)
with the profile of the sheet rendering it
flexible or bendable in one dimension; and
(h)
in which the or each flexible panel is in the form
of a roll.’ (My Emphasis)
[9]
The court below correctly noted that a key dispute between the
parties concerned the sufficiency of the patent specification,
in
particular as regards the ‘rigid material’ referred to in
the claims. It held that the word ‘rigid’
as it appeared
in the patent specification was not meant to have a technical
meaning. Makgoka J reasoned that it must therefore
be given its
ordinary meaning being ‘stiff, unyielding, not pliant or
flexible’. He considered the dictionary meaning
of ‘stiff’
which was defined as ‘not easily bent, rigid’ and held
that the evidence revealed clearly that
the barriers made of
corrugated iron were flexible parallel to the corrugations and rigid
against them. He went on to consider
whether the components provided
by Mantella was in the form of a ‘kit’ as provided for in
claim 31 of the specification’.
He held that the different
components supplied by Mantella constituted a ‘kit’ and
thus concluded that Kusile had infringed
claims 1, 16 and 31 of the
patent in question.
[10]
Turning to Kusile’s counterclaim for revocation, the court
below deliberated whether the claimed invention lacked an
inventive
step. Makgoka J took into account that the onus to prove the patent
invalid on one of the statutorily stipulated grounds,
rested on
Kusile.
[11]
As part of the enquiry in relation to what is set out in the
preceding paragraph the court below took into account the state
of
the art immediately before the priority date.
[1]
It had particular regard to one of the American patents made
available by Kusile, namely, United States Patent 3417568A, dated
24
December 1968 entitled ‘Mine shaft Bratticing’.
[12]
Makgoka J stated that Mantella’s claimed invention did not
appear to be particularly sophisticated or complex. In this
regard he
considered and compared the evidence of two experts, namely Dr
Burger, a consulting engineer skilled in construction
methods, who
testified on behalf of Kusile and Mr Elliot, an experienced mine
manager, who testified in support of Mantella’s
case. The court
below considered Dr Burger as someone skilled in the art, but not so
Mr Elliott. The art we are concerned with
is that of designing,
constructing and installing barriers or stoppings in underground
passages.
[13]
In considering the prior art, the court below had regard to the
specification of the American patent referred to in para 12
above,
namely US Patent 3417568A. The ‘Abstract of the Disclosure’
of that registered patent reads as follows:
‘
A
vertical concrete lined mine shaft has vertically spaced horizontally
disposed buntons therein carrying vertically extending corrugated
steel panels which divide the shaft into updraft and downdraft
compartments. The buntons have their ends embedded in the concrete
walls. Anchor plates also embedded in the walls are secured to the
sides of the panels.’
[14]
The relevant parts of the summary of that invention read as follows:
‘
In
summary, the invention relates to the use of buntons, corrugated
panels, anchor plates and corrugated strips in the forming of
brattice walling in mine shafts to divide the shaft into compartments
for different uses such as updraft and downdraft ventilation.
.
. .
In such an
application horizontal steel buntons preferably of streamlined shape
are positioned across the shaft with their ends
embedded in the
concrete peripheral walling. This will enable plates of about 7’6”
by 6’0” to be manufactured
and subsequently welded in
pairs to form panels of a size 15’0” by 6’0”
with corrugations along the length
thereof with a pitch of 6”
across the width. The plate used may be from
1
/
8
”
to
2
/
8
” thick depending on particular
requirements. The figures are given as a practical example only and
are in no way limitative
to the scope of the invention.’
The
inventor set out the patent’s claims as follows:
‘
1.
In a vertical mine shaft, brattice walling comprising vertically
extending steel panels dividing said shaft into plural channel
compartments, said panels having corrugations extending in a vertical
direction, vertically spaced horizontally disposed buntons
having
their ends secured to the walls of and spanning said shaft,
corrugated strips carried by said buntons, said panels having
their
upper and lower ends secured to and mating with said strips on said
buntons, anchor plates secured to the shaft wall adjacent
the ends of
said buntons and the sides of said steel panels adjacent said anchor
plates being secured thereto.
2. Mine shaft
brattice walling as claimed in claim 1 in which resilient sealing
linings are employed between overlapping joints
of the steel panels
and between the strip and the ends of the steel plates.’
[15]
The court below accepted the evidence of Dr Burger, testifying on
behalf of Kusile, that the American patent disclosed all
of the
essential features of the patent in suit, except that it made no
reference to a ‘rigid material’. Makgoka J
considered Dr
Burger’s evidence that there was no substantive difference in
the patents because both methods achieved the
same effect, namely, of
creating an airtight joint. The court below said the following:
‘
It
is to be borne in mind that the rolling together of sheets of metal
or corrugated iron is not the inventive concept of the patent
in
suit, as this was well known before the priority date of the patent
in suit.’
[16]
The court below held that the only relevant difference between the US
Patent and the one under consideration, was that the
iron sheets in
the former were joined together using a resilient sealant, whereas in
the present patent, the sheets are rolled
together to form an
airtight joint.
[17]
Makgoka J rejected the argument on behalf of Mantella, that the
patent in suit was a combination invention, combining a number
of
known features so as to produce a new or improved result. He did not
consider that the combination contended for required inventive
ingenuity. He concluded as follows:
‘
[T]he
claimed invention is not sophisticated, but very simple. Its basic
feature is the rolling together of sheets of metal or corrugated
iron
by rolling or seaming, using off-shelf equipment. It is a basic
construction using corrugated or profiled sheeting, secured
to a
support structure, to create barriers or walls. I am alive to the
fact that simplicity should not be an obstacle. However,
in the
present case, I find that there would not have been any practical
difficulties to be overcome in combining previously known
features.’
In
the result, the court below ordered the revocation of Mantella’s
patent.
[18]
It is against that conclusion that the present appeal, with the leave
of the court below, is directed.
[19]
Novelty was conceded by Kusile in the court below.
[2]
Before us the issues crystallised as follows. On infringement, the
argument on behalf of Kusile was that since the patent specification
was lacking in the respects set out in paras 4, 5 and 6 above, it was
thus invalid and liable to revocation, and Kusile could not
be guilty
of infringement. In essence, Kusile challenged the patent on the
basis that the ‘rigid material’ referred
to was not
adequately described and that there was no intelligible description
of how the joining together of sheets of ‘rigid
material’
could render flexible a panel to be affixed to an underground
passage. The patent specification was criticised
for not only being
unclear, inadequate and lacking in its description of the ‘rigid
material’ but also of being incomprehensible,
particularly as
to how the incorporation of a profile could render the ‘rigid
material’ flexible in one dimension and
‘rigid’ in
another. The remaining issue for adjudication is obviousness.
[20]
In the well-known decision of
Gentiruco
AG v Firestone SA (Pty) Ltd
1972
(1) SA 589
(A), the validity and alleged infringement of a patent was
considered. In that case this court considered that in addressing
those
aspects a court’s first task was ‘to ascertain the
nature of the invention as claimed and its precise scope . . .
Accordingly
the specification, and especially the claims, have to be
construed; it is, after all, the instrument on which the letters
patent
were applied for and granted and it must therefore necessarily
govern those issues’.
[3]
[21]
The function of claims in a patent is to define clearly and with
precision, the monopoly claimed so that others may know the
exact
boundaries of the areas within which they will be trespassing. The
claims must undoubtedly be read as part of the entire
patent
specification document. In this regard, see
Power
Steel Construction Co. (Pty) Ltd v African Batignolles Construction
(Pty) Ltd
1955 (4) SA 215
(A) at 224D-G
citing with approval
Electrical &
Musical Industries v Lissen
56 R.P.C.
23
, 39.
[22]
In
Gentiruco
at 614B-C this court stated the following:
‘
Consequently,
the rule of interpretation is to ascertain, not what the inventor or
patentee may have had in mind, but what the language
used in the
specification means, i.e., what his intention was as conveyed by the
specification, properly construed . . .
since he is presumed to
have intended what his language means. To ascertain that meaning the
words used must be read grammatically
and in their ordinary sense.
Technical words of the art or science involved in the invention must
also be given their ordinary
meaning, i.e., as they are ordinarily
understood in particular art or science, to prove which extrinsic
evidence is admissible
and usually necessary.’
[23]
In
Aktiebolaget Hassle and Another v Triomed (Pty) Ltd
2003
(1) SA 155
(SCA) at 160B–F this court stated the following:
‘
While
the claim must be construed to ascertain the intention of the
inventor as conveyed by the language he has used (
Gentiruco
AG v Firestone SA (Pty) Ltd
1972
(1) SA 589
(A) at 614B-C) what is sought by a purposive construction
is to establish what were intended to be the essential elements, or
the
essence, of the invention, which is not to be found by viewing
each word in isolation but rather by viewing them in the context
of
the invention as a whole. To the extent that it might have been
suggested in an obiter dictum in
Nampak
Products Ltd and Another v Man-Dirk (Pty) Ltd
1999
(3) SA 708
(SCA) at 714A that it might be called in aid only to
construe an ambiguous claim I do not think that is supported by the
decisions
of this Court and, in my view, it is not correct. It is
merely an approach to construction that is aimed at establishing what
was
meant in a particular context. As pointed out by Hefer JA in
Fundstrust
(Pty) Ltd (in Liquidation) v Van Deventer
1997
(1) SA 710
(A) at 726H-727B (in a passage that was adopted in
relation to the construction of patent specifications in
Monsanto
Co v MOB Animal Health (Pty) Ltd
(formerly
MD Biologics CC)
2001
(2) SA 887
(SCA) at 892B–C):
“
The
task of the interpreter is, after all, to ascertain the meaning of a
word or expression in the particular context of the statute
in which
it appears (
Loryan
(Pty) Ltd v Solarsh Tea and Coffee (Pty) Ltd
1984
(3) SA 834
(W) at 846G
ad
fin
).
As a rule every word or expression must be given its ordinary meaning
and in this regard lexical research is useful and at times
indispensable. Occasionally, however, it is not.”’
[24]
Essentially, Kusile complains that the claims of the complete
specification are unclear. It was pointed out by this court in
Roman
Roller CC and another v Speedmark Holdings (Pty) Ltd
[1995] ZASCA 78
;
1996
(1) SA 405
(AD), that in determining whether a patent claim stakes
its monopoly with a sufficient degree of clarity, the court must view
the
patent through the eyes of the skilled addressee in the relevant
art.
[4]
Corbett CJ said the
following at 419D-H:
‘
[T]he
court must take into account that such addressee is expected to use
reasonable skill and intelligence in interpreting the
language of the
patent. He is not required to struggle unduly with it, but he must
make the best of it and not adopt an attitude
of studied obtuseness.
If words or expressions in a claim are affected or defined by what is
said in the body of the specification,
the language of the claims
must be construed accordingly. Moreover, uncertainty or ambiguity in
a claim may be resolved by what
appears in the body of the
specification, which may be thus resorted to not only when the
language in question has been expressly
defined in the body of the
specification, but also, in the absence of such definition, where
there is material in the body from
which the intention of the
draftsman can be gathered. Where the words permit it, an
interpretation should be adopted which is consistent
with the
description of the problem to be overcome and the method of doing so
described in the body of the specification. Another
source of
elucidation of apparently unclear language may be the prior art
itself. (See generally
Helios
Ltd v Letraset Ltd
1970
BP 495 (T) at 498G-499B, 500B-G, 503B-C,
Letraset
Ltd v Helios Ltd
1972
(3) SA 245
(A) at 249H-251B.)’
[25]
Since Kusile’s case on infringement and revocation is centred
on the inadequacy of the specification in relation to ‘rigid
material’, I consider that the appropriate point of departure.
It is necessary at the outset to record that before us the
parties
were agreed that the word ‘rigid’ where it appears in the
specification was not meant to have a technical meaning.
It was
contended on behalf of Kusile that the patent does not explain what
is meant by ‘rigid material’. The agreed
integers of the
independent claims reflected above, as the cited authorities dictate,
have to be read in the context of the specification
as a whole. I
turn to the relevant part of the specification that is descriptive of
the ‘rigid material’, which Kusile
chooses to ignore. It
reads as follows:
‘
[E]ach
flexible panel includes at least one profiled, eg corrugated, sheet
of a rigid material, with the profile of the sheet rendering
it
flexible or bendable in one dimension. By “profiled” is
meant that the sheet has a plurality of ridges and troughs
therein.
These ridges and troughs thus impart flexibility to the panel, eg
permit it to be rolled up, to facilitate transport thereof.
Typically, the sheet is corrugated iron or steel sheet.’
These
words, read with the independent claims, clearly mean that the
flexible panel typically comprises corrugated sheets usually
made of
iron or steel. Although what is quoted above does not limit the
composition of the invention to corrugated iron or steel,
it
contemplates corrugated iron or steel as the typical material to be
used in the flexible panel. It is common cause that Kusile’s
alleged infringing barrier is constructed of corrugated iron.
[26]
Since it was agreed that the word ‘rigid’ was meant to
have its ordinary meaning, the court below cannot be faulted
for its
consideration of the dictionary meaning, namely, ‘stiff,
unyielding, not pliant or flexible’.
[5]
Of course the qualifications in relation to dictionary definitions of
words as expressed by this court in
Monsanto
Co v MDB Animal Health (Pty) Ltd (formerly MD Biologics CC)
2001
(2) SA 887
(SCA) at 892A-G
[6]
have to be borne in mind. They are, first, that a dictionary meaning
of a word serves as a guide and cannot govern the interpretation
of a
patent specification. Where a word has more than one meaning the
dictionary cannot prescribe priorities of meaning. Second,
is that
even definitions must be read in context.
[7]
The question remains, what is the meaning applicable in the context
of the particular document under consideration.
[27]
Integers (f) and (g) of claim 1 envisage a flexible panel including
at least one profiled sheet of a ‘rigid material’
and
explain that it is the profile of the sheet that renders it flexible
or bendable in one direction. Those integers have to be
considered
alongside that part of the specification set out in paragraph 26
above in which it is explained that profiling has as
a result that
the iron or steel sheet has a plurality of ridges and troughs which
render it flexible in one direction.
[28]
That leads us to Kusile’s contention that the specification
does not explain how a person skilled in the art would make
sense of
a flexible panel being derived from a plurality of adjoining sheets
of a ‘rigid material’. Much store was
placed by Kusile on
the evidence of Dr Burger. In relation to the sufficiency of a patent
specification expert evidence is admissible.
A patent specification
must be construed with reference to the state of knowledge of those
skilled in the art obtaining at the
time of the publication of the
specification. In
Sappi Fine Papers (Pty) Ltd v ICI Canada Inc
[1992] ZASCA 58
;
1992 (3) SA 306
(AD) the following is said:
‘
[A]
patent specification must be construed with reference to the state of
knowledge of those skilled in the art; and, according
to English
authority, the relevant state of knowledge is that obtaining at the
time of the publication of the specification (see
Nobel’s
Explosive Co Ltd v Anderson
[1894]
11 RPC 519
(CA) at 523 lines 9-29;
Marconi’s
Wireless Telegraph Co Ltd v Mullard Radio Valve Co Ltd
[1924]
41 RPC 323
(HL) at 334 lines 40-2; the
Catnic
case
supra at 243 lines 12-18; Terrel on the
Law
of Patents
13
th
ed
at 77 para 4.35). I take this to be the time of filing of the
application. This appears to be in accordance with our law. It
is not
necessary to decide whether, in the case of a convention application,
the date of publication should be understood to be
the priority date
(cf Burrell
South
African Patent Law and Practice
2
nd
ed
at 246 para 5.23).
Accordingly, in
order to enable the Court to construe the specification properly, it
must be instructed by expert evidence as to
the state of the art in
the field to which the invention relates as it was at the relevant
date (
Gentiruco AG v Firestone SA (Pty) Ltd
1972 (1) SA 589
(A) at 614E-F). In this way the Court is placed, as far as possible,
in the position of the skilled addressee. In this connection,
too,
the Court should bear in mind that the skilled addressee is someone
who is expected to bring reasonable intelligence to bear
upon the
language of the specification and who, while not required to struggle
unduly with it, is to make the best of it and not
to adopt an
attitude of studied obtuseness (see Holmes JA in
Letraset Ltd v
Helios Ltd
1972 (3) SA 245
(A) at 251A, quoting Colman J in the
Court
a quo
).
In
the
Catnic
case
supra
, Lord Diplock also stated (at 243
lines 3-5):
“
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 indulge.”’
[29]
In the ultimate result, it is of course the court’s duty to
construe claims and specification and on the merits, to draw
inferences from the facts established by evidence.
[8]
[30]
Dr Burger was a qualified mechanical engineer and had a PhD in design
engineering. He was the director of a company which specialised
in
the design of mining equipment and also for decades, had been
involved in consulting in the mining industry. He was unyielding
when
he testified about how an engineer would understand ‘rigid
material’. He was adamant that there was no such thing
as a
‘rigid material’. As an example he referred to granite
which he explained had a point at which it too would yield
and break.
Dr Burger insisted that profiling a sheet of iron did not render it
flexible in one dimension. Taking the view that
there was no such
thing as ‘rigid material’, he refused to acknowledge that
corrugating a sheet of iron would have
the effect of making it more
‘rigid’. Ultimately, he did however accept, albeit
reluctantly, that corrugating a flat
sheet of iron would have the
effect of stiffening it in one direction.
[31]
Mr Haven, who had 33 years of experience in mine ventilation and 29
years at coal mines also testified on behalf of Kusile.
He accepted
that iron sheet material is corrugated to give it strength. He was
loath to admit that it provided ‘rigidity’.
He accepted
that corrugated iron sheets can be rolled up in one direction and
that, when it was unrolled, it would retain its form.
Mr Haven was
insistent that a corrugated iron sheet could be bent in two
dimensions, namely, parallel to the corrugations and across
the
corrugations. When asked to demonstrate this in court, Mr Haven could
bend it parallel to the corrugations but had considerable
difficulty
bending it against the corrugations. That difficulty, as recorded in
the judgment of the court below, resulted in him
cutting himself.
[32]
Mr Elliot, the chief executive officer of a coal company and a
director of an engineering and equipment manufacturing company,
as
well as a director of a company consulting in designing mines,
testified in support of Mantella’s case. He had an engineering
degree, decades of experience in the mining industry and vast
experience in the construction of ventilation passages in mines.
His
exposure to different types of coal mining was extensive. At some
stage in his life, he was an underground manager. He was
also a
general manager at mines. As an engineer and someone who had
experience in the design, construction and installation of
underground barriers or stoppings, he understood the specification to
indicate the use of corrugated iron sheets as a component
in their
construction. He testified that corrugating the iron sheet made it
‘rigid’ in one direction and flexible in
another. He had
no difficulty understanding that concept and the specification in
this regard.
[33]
In my view, the court below was correct in concluding that Mr Haven’s
difficulty in demonstrating that a corrugated iron
sheet is flexible
in two dimensions justified the conclusion that corrugated iron is
flexible parallel to the corrugations and
‘rigid’ against
them. Dr Burger insisted on interpreting the expression ‘rigid
material’ strictly technically
when it was agreed that it was
to be construed according to its ordinary meaning as was done by the
court below.
[34]
Dr Burger was dogmatic and unpersuasive and I have no difficulty in
concluding that Mr Elliot, who had vast practical experience
in
underground mining, particularly in coal mines, was an impressive
witness. He adequately explained how a skilled addressee would
understand the patent specification and how it would be put into
operation. I understand and accept his explanation that the
corrugations
in the iron sheet rendered them flexible in one
direction and that joining the sheets together did not result in the
panels losing
their flexibility.
[35]
Kusile’s defence on infringement centred on the insufficiency
of the patent specification on the bases referred to earlier.
It was
not contended on Kusile’s behalf, either in written heads or
during oral argument, that beyond that, the court below
had erred in
its conclusion on Mantella’s claim to a ‘kit’ in
terms of claim 31. In my view, the court below
was wholly justified
in having regard to Mr Haven’s concession that there were
several component parts to be involved in
the installation of the
contemplated barrier and that the claim to a kit was justified.
[36]
Other than the aforesaid points raised by Kusile in relation to the
sufficiency of the patent specification, it was uncontested
that
Kusile’s barriers at the Khutala Colliery, in material
respects, resembled the barriers that Mantella sold and installed
at
mines throughout South Africa in accordance with the patent in suit.
The court below therefore rightly held that Mantella had
proved
infringement.
[37]
It is now necessary to describe succinctly and portray graphically,
Mantella’s barriers and method of construction and
installation, based on the specification as it would be understood by
an addressee skilled in the art. First, corrugated iron sheets
are
put through a lock-forming machine which forms a bend in the sheets
on both sides which then are hooked or clipped together
to form the
seam referred to in the specification.
This
is
then placed in a press rolling machine
that presses the joints flat to create an airtight joint. The sheets
are joined together
in dimensions that depend on the dimensions of
the tunnels in the mine requiring the barrier. Because the panels are
flexible in
one direction, they can then be rolled up in a fashion
which, from the photograph that appears in paragraph 39, resembles a
roll-up
garage door. This makes it easy to transport to and from
mines. In the tunnel requiring the barrier, square tubing is used to
create
a frame (‘the support structure’) fixed to the
tunnel walls and then the rolled up panels are attached to the frame.
After the panels are attached to the square tubing frame on all
sides, they are then sealed off to form an airtight barrier for
an
underground ventilation system. It is common cause that the lock
forming and press rolling machines used in the production of
the
barriers are readily commercially available. It is also common cause
that seaming and pressing together of ends of sheets of
metal are
well-established techniques known in engineering circles at the
priority date of the patent in suit. The ‘elongated
support
member’ to which the panels are attached were, at the priority
date, also well known in engineering circles.
[38]
The following photograph shows the two ends of a corrugated sheet
being seamed:
[SEE
PDF FOR IMAGES]
[39]
The photograph appearing hereunder shows the rolled up panels being
transported.
[SEE
PDF FOR IMAGES]
[40]
The photograph that appears below is one showing a part of the
installed Kusile barrier:
[SEE
PDF FOR IMAGES]
[41]
It is undisputed that initially, Kusile sourced its own corrugated
sheets which were sent to Mantella for seaming where after
they would
be returned in roll-up form to Kusile for itself to later install.
This arrangement changed as Mantella insisted that
the entire system
be purchased from it. This, it seemed, proved too costly for Kusile
which led to the latter sourcing its own
material and manufacturing
and installing its own barriers and that led, ultimately, to the
litigation culminating in the present
appeal.
[42]
In terms of s 61(1)(
c
) of the Act a person may apply for the
revocation of a patent on the basis that the patent is not patentable
under s 25. Under
the heading ‘Patentable Inventions’, s
25(1) provides for patents to be granted for ‘any new invention
which
involves an inventive step and which is capable of being used
or applied in trade or industry or agriculture’. Section 26(10)
provides that ‘an invention shall be deemed to involve an
inventive step if it is not obvious to a person skilled in the
art,
having regard to any matter which forms, immediately before the
priority date of the invention part of the state of the art
by virtue
only of subsection 6.’ The latter subsection reads as follows:
‘
The
state of the art shall comprise all matter (whether a product, a
process, information about either, or anything else) which
has been
made available to the public (whether in the Republic or elsewhere)
by written or oral description, by use or in any other
way.’
[43]
As stated earlier, Kusile’s case is that the patent in suit is
revocable on the ground of obviousness. As recorded by
the court
below, novelty in the present dispute was conceded by Kusile. Lack of
novelty is commonly referred to as ‘anticipation’.
It is
necessary to have regard briefly, to the distinction between novelty
and obviousness. As far back as 1930 this court warned
about the
necessity of preserving the distinction. In
Veasey v Denver Rock
Drill and Machinery Co Ltd
1930 AD 243
at 281, Stratford JA said
the following:
‘
But
it
has
sometimes
been
said
that
the
distinction
between
the
two
is
at
times
obscure
and
cannot
always
be
maintained. . . . With great respect to these learned authors, I
think that the distinction is both valuable and clear and should
not
be
obscured.
. . In
an
attack
upon
the
validity
of
a
patent
on
these
two
grounds
the
distinction
between
them
is
all
important because of the differing nature of the evidence required in
the two cases. Anticipation destroys the claim to novelty,
but the
prior publication (or prior user) relied upon as an anticipation must
be of the identical – or substantially identical
–
invention claimed. Essence, of course, and not form is what is looked
to; essential resemblance may be hidden, and
comparison between
the two may be difficult in particular cases. But difficulty in
application does not destroy the clearness of
the principle to be
applied. The invention claimed is not new if there has been prior
publication of it. But novelty is not destroyed
by prior publication
of an invention closely resembling that of the patent challenged if
the difference between the two, however
small, is a real difference.
In a defence raising want of novelty the evidence in support of it is
directed to establish the identical
nature of the prior invention and
its prior publication. . . . The defence of want of subject-matter
[“obviousness”]
requires
evidence
to
establish
the
prior
common
knowledge
in
the
art
and
when that knowledge has been fully appreciated it is for the Court to
say whether the plaintiff has taken an inventive step
forward.
.
.
.
On
the
issue
of
subject-matter
[“obviousness”]
the
difference between the plaintiff’s invention and prior common
knowledge must be measured and valued. If there is no difference,
there is no subject-matter; if there is a difference but it
calls for no inventive ingenuity to bring it about, there is also
no
subject-matter [“obviousness”]; but if there is a
real inventive step forward, no matter how small, that is
sufficient
to give subject-matter to the patent. On the question of novelty
there is again comparison, in this case, however, not
with prior
common knowledge but with prior publication (or public user). And
when comparison is made with a prior publication and
it is found that
the two are not substantially the same, the defence of anticipation
fails. It is no support to this defence to
say that the difference
between the two called for no inventive ingenuity to bring it about;
though that enquiry may be relevant
to the defence of want of
subject-matter.’
See
also T D Burrell,
Burrell’s South
African Patent and Design Law
3ed
(1999) para 4.12.2.
[44]
The enquiry into obviousness involves three questions: first, what
the state of the art was immediately before the priority
date of the
invention in suit; second, whether the invention claimed was a step
forward on the state of the art; third, whether
in the light of the
state of the art, the step was inventive, that is, not obvious. See
Burrell
op cit
para
4.8 and
Roman Roller CC
at
414-418
.
[45]
In
Ensign-Bickford (South Africa) (Pty) Ltd and others v AECI
Explosives and Chemicals Ltd
1999 (1) SA 70
(SCA), Plewman JA
‘reformulated’ the threefold inquiry as follows:
‘
(1)
What is the inventive step said to be involved in the patent in suit?
(2)
What was, at the priority date, the state of the art (as statutorily
defined) relevant to that step?
(3)
In what respect does the step go beyond, or differ from, that state
of the art?
(4)
Having regard to such development or difference, would the taking of
the step be obvious to the skilled man?’
[46]
In Burrell
op cit
at
166, the learned author points out that the approach followed by
Corbett CJ in
Roman Roller CC
and referred to in para 44 above is in fact the
skeletal structure adopted by our courts over the years. It is a
structure that
the learned author favours above the approach in
Ensign-Bickford
and
which he follows. I am not persuaded that there is a substantive
difference between the two. The approach in
Roman
Roller CC
has an appeal because of its
simplicity.
[47]
Before embarking on the threefold enquiry identified in
Roman
Roller CC
it is necessary to record
that initially, ventilation barriers in mines, known as brattices or
bratticing, were either in the form
of walls built from bricks and
mortar in a conventional building method to block off passages, or in
the form of ventilation curtains
made of cloth, nailed to the walls
of passages that spanned the passage like a conventional curtain or
sail. Brick and mortar type
walls required substantial materials
which had to be transported from the surface to underground
locations. They were also labour
intensive. Reusing the materials
comprising brick and mortar walls was virtually impossible. Although
the cloth barriers were reusable,
lightweight and easy to install,
they deteriorated over time and were not sufficiently fire resistant.
The cloth barriers were
susceptible to damage or destruction in a
hostile mining environment and were often lost due to theft.
[48]
In considering the question of obviousness, which it is the court’s
duty to determine,
[9]
the
primary evidence is the technical evidence by expert witnesses in
respect of the nature of the step claimed to have been inventive,
the
state of the art as at the priority date relevant to that step and
the respect or respects in which the step goes beyond or
differs from
that state of the art. See
Schlumberger
Logelco Inc v Coflexip SA
2003
(1) SA 16
(SCA) para 34.
[10]
Secondary evidence can serve to test the primary evidence and enable
a proper evaluation thereof.
The
state of the art
[49]
It was accepted on behalf of Kusile that the state of the art,
immediately before the priority date, is best reflected in the
American patent referred to earlier. The patentee was a South African
living on the Reef and almost certainly arose from his experience
in
South African mines. It is important to note at the outset that the
invention, as can be seen from the abstract, summary and
the claims
set out above, was contemplated to be put into operation in vertical
shafts to divide them into updraft and downdraft
compartments. It is
a common characteristic of South African gold mines that access to
them and the provision of ventilation occurs
by means of such
vertical shafts which are something different from the underground
passages and stopes we are here concerned with.
[50]
In the American patent, horizontal steel buntons are positioned
across a vertical shaft with their ends embedded in the concrete
peripheral walling. End anchor plates, to which the panels may be
bolted, will be imbedded in or bolted to the concrete walling
between
buntons and the joints will be provided with rubber or other
resilient lining. This lining will also be included in the
horizontal
and vertical edges of adjacent panels to enable the bratticing to
extend right across the shaft. The upper and lower
ends of the panels
will be secured to the buntons. The iron sheets are
welded
in pairs to form the panels.
A
step forward?
[51]
The inventive step asserted by Mantella is that of engaging seams of
adjacent corrugated iron sheets with each other and rolling
the seams
closed thereby joining them in a substantially airtight fashion
before the panel is attached to the support structure
between the
walls of the underground passage. This results in minimum sheet
material overlap at the seams, allows the panels to
be rolled up and
provides a substantially airtight joint. This improves handling,
transportation and installation of the panels
and results in
significant all-round cost savings.
[52]
Having conceded novelty, Kusile found itself in an invidious position
evidenced by an initial submission on its behalf that
the American
patent contained all of the essential features of the patent in suit
and subsequently refined into a contention that,
whilst the patent in
suit did represent a step beyond the state of the art, that step did
not involve inventive ingenuity. The
court below accepted Dr Burger’s
explanation that the patent disclosed all the necessary features of
the patent in suit,
except that it made no reference to ‘rigid
material’. Makgoka J was persuaded by Dr Burger’s
testimony that the
sheets being joined together in the American
patent by virtue of a resilient sealing was no different to the
patent in suit having
the corrugated iron sheets rolled together to
form an airtight joint, because both methods achieved the same
result. The court
below ignored the following very significant
concession made by Dr Burger when he was asked whether, immediately
before the priority
date, he would have come up with the idea of
seaming the edges of the corrugated iron sheets and rolling them to
form an airtight
joint. Although answering in the affirmative, he
said the following:
‘
M’Lord,
purely for the reason that it is a very easy and imaginative way of
construction if you want to use that word.’
The
word ‘imaginative’ is defined in the Concise Oxford
English Dictionary as:
‘
[H]aving
or showing creativity or inventiveness.’
[53]
Soon after Dr Burger’s testimony, referred to in the preceding
paragraph, he said the following:
‘
What
I will give the inventor a credit and that was it was a creative . .
. [indistinct] of existing techniques.’
The
missing word is probably ‘use’ or ‘employment’.
What the two passages of evidence reveal is a concession
of
‘creative’ use of existing techniques – the very
antithesis of obviousness.
[54]
Mr Haven testified about a time in the past when he had worked with
Mr Elliot and had discussions about problems related to
ventilation.
One of their principal concerns was the leakage in relation to ‘zinc
walls’. They struggled to find a
suitable method to address the
problem. According to Mr Elliot the airtight joints provided by the
patent in suit were ‘a
huge step in the right direction’.
The court below ignored the evidence of Dr Burger referred to in the
preceding paragraphs
as well as the evidence of Mr Haven and Mr
Elliot.
[55]
Mr Elliot’s evidence in relation to the benefits accruing from
the patent in suit is significant. First, as illustrated
by the
photograph of the rolled-up panels, there is a saving in storage and
transport costs. A number of barriers can be stored
in reduced space
and be transported in a single load. The materials are compact,
simple, light weight and in a roll form. There
is a cost saving in
time and labour, as they can be erected in a simple and easy manner.
There are cost savings in that virtually
all the components of the
barrier of the patent are capable of being used multiple times.
Substantially airtight joints are obtained
in an easy and
cost-effective manner without the need to provide other forms of
sealing between adjacent sheets. During blasting
operations in a mine
the barriers in question have some degree of yield to absorb the
shock from blast. The panels are relatively
fire resistant and are
not easily susceptible to the production of toxic fumes. Despite all
the effort put into finding a simpler
solution to the problems of
creating ventilation passages in mines, to which both Mr Elliot and
Mr Haven testified, no similar
product had been devised by anyone
else.
[56]
I am persuaded that the patent in suit did disclose a step forward.
An
inventive step?
[57]
In
Roman Roller CC
Corbett CJ said the following:
‘
The
next and final question in regard to the issue of obviousness is
whether the patent involves an inventive step. This must be
judged by
asking oneself whether, in the light of the state of the art at the
time, the step forward taken by the invention would
have been obvious
to the skilled addressee.’
[58]
The priority date of the patent in suit is 17 August 1998. In the
almost 30 years that passed between the American patent and
the
priority date of the patent in suit, in an era of intensive mining in
South Africa, no one appears to have thought of the inventive
step
claimed by Mantella. In
Roman Roller CC
at 418H-I Corbett CJ
referred to the evidence of a witness to whom it was put that an
invention was obvious, he replied as follows:
‘
If
it was so obvious, why did we have to wait so long before somebody
did it? We battled and we had major problems.’
In
this regard the words of Sir Donald Nicholls in
Mölnlycke AB
and Another v Procter & Gamble Ltd and Others (No 5)
[1994]
RPC 49
(CA) at 113 are apposite:
‘
What
with hindsight, seems plain and obvious, often was not so seen at the
time. It is for this reason that contemporary events
can be of
evidential assistance when testing the experts’ primary
evidence. For instance, many people may have been industriously
searching for a solution to the problem for some years without
hitting upon the allegedly obvious invention.’
[59]
The step forward claimed by the patent in suit is one that is based
on a combination of known techniques and, in hindsight,
one might
rightly marvel at its simplicity. It is common cause that the patent
in suit is successfully and extensively employed
in mines in this
country. In
Roman Roller CC
Corbett CJ stated that simplicity
is not an obstacle to a step being recognised as being inventive. He
said the following at 417J–418A:
‘
Experience
has shown that a number of simple inventions have constituted
patentable subject-matter. Moreover, one must guard against
the snare
of hindsight, while at the same time not over-compensating for this
factor.’
[60]
In
Schlumberger Logelco Inc v Coflexip
SA
2003 (1) SA 16
(SCA), this court
considered a challenge to a patent on the ground of obviousness. The
patent was in relation to an apparatus using
at least one hose for
the purpose of transferring fluid, particularly oil, between the
seabed and the sea surface. As at the priority
date, various
configurations of the apparatus were known and utilised. The patent
in suit in
Schlumberger
married
known techniques in a manner held by this court to be inventive.
Similarly, in my view, the combination by Mantella of known
techniques in relation to the use of corrugated iron sheeting in
barriers or stoppings in underground passage-ways involved creative
ingenuity. The challenge to the patent on the ground of obviousness
must therefore fail. The court below erred in its conclusion
on this
aspect.
[61]
The following order is made:
1. The appeal is
upheld with costs, including the costs of two counsel;
2. The order of the
court
a quo
is set aside and substituted with the following:
‘
(a)
The defendant’s counterclaim for the revocation of South
African Patent Number 98/7391 is dismissed;
(b) The defendant is
interdicted from infringing South African Patent Number 98/7391 by
making, using, exercising, disposing or
offering to dispose of, or
importing barriers or stoppings, in particular barriers or stoppings
in underground passages, a method
of erecting such barriers or
stoppings in an underground passage, or a kit for erecting a barrier
or stopping in an underground
passage which fall within the scope of
the claims of South African Patent Number 98/7391;
(c) An order is
issued:
(1) directing an
enquiry as to the damages suffered by the Plaintiff as a result of
the defendant’s infringement of South
African Patent Number
98/7391 and directing the payment by the defendant to the plaintiff
of the amount of damages found to have
been so suffered;
(2) directing that
such enquiry shall take place in accordance with the procedure agreed
upon by the parties; and failing such agreement,
authorising either
of the parties to make application to the court of the Commissioner
of Patents for directions in regard to the
enquiry.
(d) A certificate of
contested validity is issued in respect of claims 1, 16 and 31 of
South African Patent Number 98/7391 as provided
for in section 74 of
the Patents Act 57 of 1978.
(e) The defendant is
ordered to pay the costs of the action.’
________________________
MS
NAVSA
ACTING
DEPUTY PRESIDENT
APPEARANCES:
FOR
APPELLANT: Adv. A J Bester SC (with him D R Harms)
Instructed
by:
Adams
& Adams Inc., Pretoria
Honey
Attorneys, Bloemfontein
FOR
RESPONDENT: Adv. G D Marriott
Instructed
by
Veneziano
Attorneys, Pretoria
Symington
& de Kok, Bloemfontein
[1]
Except
as otherwise provided for, the date of lodging of the patent
application is the priority date of an invention to which
the
application relates and is also the date for any matter contained in
such application, whether or not such matter is the
same as the
invention. See s 33 of the Act for priority dated variations and
also ‘Patents’
Lawsa
(2ed)
Vol 20 para 151(a) by J R Steyn (updated by D Tanziani).
[2]
For
a useful discussion, with reference to authorities, on the
distinction between novelty and obviousness see T D Burrell,
Burrell’s
South African Patents and Design Law
3
ed (1999) para 4.12.2.
[3]
See
613G-H.
[4]
See
419D.
[5]
Para
17.
[6]
With
reference to
Fundtrust
(Pty) Ltd (in liquidation) v Van Deventer
1997
(1) SA 710
(A) and
De
Beers Industrial Diamond Division (Pty) Ltd v Ishizuka
1980
(2) SA 191 (T).
[7]
With
reference to
The
Cleveland Graphite Bronze Company and Vandervell Products Ld v The
Glacier Metal Coy LD
[1949]
RPC 157 (CA).
[8]
See
Coopers
(S.A.) Ltd v Deutsche Schadlingbekampfung MBH
1976
(3) SA 352
(AD) at 370F and
Gentiruco
at
616D-618G.
[9]
See
Burrell’s
op
cit
para
4.8.
[10]
See
also the discussion in Burrell’s,
op
cit
,
para 4.8 and
Schlumberger
Logelco Inc v Coflexip SA
2003
(1) SA 16
(SCA) para 33-34 in relation to this court’s
decision in
Ensign-Bickford
(South Africa) (Pty) Ltd and others v AECI Explosives and Chemicals
Ltd
1999
(1) SA 70
(SCA) in so far as it relates to expert evidence in
relation to obviousness.