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[2013] ZASCA 112
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Camworth Techologies Ltd v Videx Wire Products (Pty) Ltd t/a Videx Mining Products (702/2012) [2013] ZASCA 112; 2013 BIP 57 (SCA) (17 September 2013)
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THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Reportable
Case no: 702/2012
In
the matter between:
CAMWORTH
TECHNOLOGIES LIMITED
...........................................
Appellant
and
VIDEX
WIRE PRODUCTS (PTY) LTD T/A
VIDEX
MINING PRODUCTS
............................................................
Respondent
Neutral
citation:
Camworth Technologies Ltd v Videx Wire Products
(Pty) Ltd
(702/12)
[2013] ZASCA 112
(17 September 2013)
Bench:
NUGENT, PONNAN, BOSIELO and WALLIS JJA and SWAIN AJA
Heard: 21 AUGUST 2013
Delivered: 17 SEPTEMBER 2013
Summary:
Patent – infringement of – construction of
specification – patented device and infringing device
fundamentally
different in operation – no infringement where
essential integers of the claim in the patent not present in
infringing device.
______________________________________________________________________
ORDER
______________________________________________________________________
On
appeal from
:
The Court of the Commissioner of
Patents (Louw J):
The appeal
is dismissed with costs, including those consequent upon the
employment of two counsel.
______________________________________________________________________
JUDGMENT
______________________________________________________________________
PONNAN JA (NUGENT, BOSIELO and WALLIS JJA and SWAIN AJA
concurring):
[1] The respondent, Videx Wire Products (Pty) Ltd t/a Videx Mining
Products (Videx), instituted action in the Court of the Commissioner
of Patents against the appellant, Camworth Technologies Ltd
(Camworth), the patentee of South African Patent 98/7928 entitled:
'Elongate support preload device' (the patent). Videx sought a
declaration in terms of s 69(1) of the Patents Act 57 of 1978 (the
Act) that a pre-stressing device (a Videx pot) that it intended to
manufacture and dispose of in the Republic of South Africa did
not
infringe the claims of the patent.
[2] Section 69(1) of the Act, headed 'Declaration as to
non-infringement', provides:
'(1) A declaration that the use
by any person of any process, or the making or use or offer to
dispose or disposal or importation
of any article by any person, does
not or would not constitute an infringement of a patent, may be made
by the commissioner in
proceedings between that person and the
patentee, notwithstanding that no assertion to the contrary has been
made by the patentee,
if it is proved –
(a)
that
such person has applied in writing to the patentee for a written
acknowledgement to the effect of the declaration claimed,
and has
furnished the patentee with full particulars of the process or
article in question; and
(b)
that
the patentee has failed to give such an acknowledgement.'
[3] There is no dispute between the parties that the procedural
requirements of s 69(1) of the Act were complied with. The issue
is
thus whether the Videx pot falls within the ambit of any of the
claims of Camworth’s patent and therefore infringes it.
A
determination of that question turns upon a comparison between the
Videx pot and the words of the claims in the patent (
Letraset Ltd
v Helios Ltd
1972 (3) SA 245
(A) at 274G-H). For, as Trollip JA
observed in
Gentiruco AG v Firestone SA (Pty) Ltd
1972 (1) SA
589
(A) at 613F-H: ‘our very first task is 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’.
[4] According to Harms JA (
Monsanto CO v MDB Animal Health (Pty)
Ltd
(formerly MD Biologics CC)
2001 (2) SA 887
(SCA) para
8):
'The rules relating to the
interpretation of patents have often been stated and do not need any
reformulation. The problem lies
in their sensible application in any
given case. For present purposes the following rules as they appear
in
Gentiruco AG v
Firestone SA (Pty) Ltd
1972
(1) SA 589
(A) at 614A-616D may be emphasised:
(a)
a specification
should be construed like any other document, subject to the
interpreter being mindful of the objects of a specification
and its
several parts;
(b)
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, ie what the
intention was as conveyed by the specification, properly construed;
(c)
to
ascertain that meaning the words used must be read grammatically and
in their ordinary sense;
(d)
technical words of the art or
science involved in the invention must also be given their ordinary
meaning, ie as they are ordinarily
understood in the particular art
or science;
(e)
if it appears that a word or
expression is used, not in its ordinary sense, but with some special
connotation, it must be given
that meaning since the specification
may occasionally define a particular word or expression with the
intention that it should
bear that meaning in its body or claims,
thereby providing its own dictionary for its interpretation;
(f)
if a word or expression is
susceptible of some flexibility in its ordinary connotation, it
should be interpreted so as to conform
with and not to be
inconsistent with or repugnant to the rest of the specification; and
(g)
if
it appears from reading the specification as a whole that certain
words or expressions in the claims are affected or defined
by what is
said in the body of the specification, the language of the claims
must then be construed accordingly.'
[5] Broadly speaking, the patent relates to a pre-stressing unit for
preloading an elongate timber mine support between a hanging
wall and
a foot wall in a mine working. The unit takes the form of a closed
pressure vessel with an inner component and an outer
component. When
erecting a mine support, a timber prop is cut to a length just short
of the distance between a hanging wall and
a foot wall of a mine
working. The device is then located between the underside of the
timber prop and the foot wall (it may also
be located between the top
of the timber prop and the hanging wall). A high pressure hose is
then used to fill it with water –
or some other suitable liquid
- resulting in deformation of the pressure vessel and shallowing of
the socket. As the socket shallows,
the upper end of the prop engages
the hanging wall and the base of the device deforms into anchoring
conformity with the foot wall.
The axial expansion of the device
loads the mine prop, locking it in place and compressing the hanging
wall of the mine working.
This compression may serve to close cracks
in the roof of the mine working and may secure loose blocks of rock
to reduce ground
fall.
[6] Figures 1 to 3 of the patent specification on Annexure A hereto,
illustrate the preferred embodiment of the invention. Figure
1 is a
sectioned side elevation of the preload device of the invention.
Figure 2 is a partially diagrammatic sectioned side elevation
of the
preload device of figure 1 prior to activation. And figure 3 is a
view similar to that of figure 2 showing the preload device
fully
activated. The numerals below correspond with those in the figures in
Annexure A. The body of the specification explains
that the pot will
generally be formed from sheet metal. It has an inner component (14)
and an outer component (16) which are welded
together at 18 to
provide a pressure vessel. The pressure vessel includes an 'annular
chamber portion' (20) which surrounds the
recess (19). The recess is
in the form of a socket which houses the elongated load support in
use. The outer component of the pot
is the 'outer wall' of the device
while the inner component is the 'cylindrical side wall' of the
socket. Importantly, the rim
of the inner component of the pot is
convexly curved in cross-section at 21 in Figure 1. The pot also
includes means for inflating
the vessel in the form of a liquid inlet
(22) over which a threaded socket (24) is located. A valve (12)
functions to connect a
hose to the pot in conventional fashion. In
use, a high pressure water hose is connected to the valve (12) and
the pot is filled
with water at a pressure between 100 and 150 bar.
This high pressure causes the inner component of the housing (14) to
deform outwardly
thus shallowing the recess (19) as illustrated in
Figure 3. The inner wall may be made from thinner gauge sheet
material than the
outer wall to ensure that it deforms prior to the
outer wall. The shallowing of the recess (19) results in the
elongated load support
being in pressure-bearing contact with the
foot wall or hanging wall (as the case may be) in the mine. The
convexly curved shape
of the inner wall (at 21) allows the socket to
'roll out' or shallow evenly until the elongated load support is in
pressure-bearing
contact with the wall.
[7] The patent comprises seven claims. It hardly needs re-stating
that the function of the claims is to define with clarity and
precision the scope of the invention so that others may know the
exact boundaries of the area within which they may not trespass
(
Ensign-Bickford (SA) (Pty) Ltd & others v AECI Explosives and
Chemicals Ltd
1999 (1) SA 70
(SCA) at 77H-78B). The language of
the claim, as Nugent JA observed in
Aktiebolaget Hässle &
another v Triomed (Pty) Ltd
2003 (1) SA 155
(SCA) para 8, must be
construed purposively, so as to extract from it the essence, or the
essential elements, of the invention.
[8] All seven claims are product or apparatus claims to a preload
device. Claims 2 to 6 are dependent on claim 1. Claim 7 is a
so-called omnibus claim. The matter thus proceeded on the basis that
if claim 1 of the patent is not infringed by the Videx pot
none of
the other claims will be infringed. It is therefore necessary to
consider only claim 1, which reads:
'A preload device for an
elongated load support including a closed pressure vessel, a recess
in the form of a socket having a cylindrical
side wall in one wall of
the vessel in which an end of a support may be located, an outer wall
which is radially spaced from the
cylindrical wall of the socket with
the outer end of the socket wall being convexly curved in
cross-section onto the outer wall
of the vessel to define at least a
portion of a chamber in the vessel which surrounds the socket and
means for inflating the vessel
to shallow the socket.'
[9] Claim 1 of the patent can be divided into the following integers:
(a) A preload device for an elongated load support including;
(b) a pressure vessel;
(c) a recess in the form of a socket having a cylindrical side wall
in one wall of the vessel in which an end of a support may
be
located;
(d) an outer wall which is radially spaced from the cylindrical wall
of the socket with the outer end of the socket wall being
convexly
curved in cross-section on the outer wall of the vessel;
(e) to define at least a portion of a chamber in the vessel which
surrounds the socket;
(f) and means for inflating the vessel to shallow the socket.
[10] The case advanced by Videx is that its pot does not include
integers (d) and (f) of the patent in suit. The Commissioner (Louw
J)
agreed with Videx. Louw J accordingly issued a declaration of
non-infringement and ordered Camworth to pay Videx's costs including
those consequent upon the employment of two counsel. This appeal is
with the leave of the Commissioner.
[11] Before the commencement of the trial it was foreshadowed that
experts would be called by each party to testify. In the event
neither party did. On the first day of the trial it was agreed, as
recorded by the learned judge in the court below, that:
'. . . [T]he evidence tendered
on behalf of the plaintiff in the form of the expert summary in the
name of Doctor N D L Burger dated
2 March 2012 together with the
report of CTMI Consulting (Pty) Ltd (of which he is the managing
director) dated 9 June 2011, and
the evidence filed on behalf of the
defendant in the form of the report by Spectramech CC, authored by
Prof. C Scheffer of Stellenbosch
University, would be admitted as the
evidence on which the parties rely without there being any need to
call the expert concerned,
there being no challenge to the accuracy
of the observations, summaries, reports and opinions by either side's
expert witness by
the other side.'
[12] Louw J approached the evidence of the experts - which was the
only evidence that served before him - thus:
'[12] Mr Bowman SC submitted on
behalf of the plaintiff that the only test carried out by Prof.
Scheffer which was within the specifications
of the plaintiff's Videx
pot was the one carried out on the 140mm pot with a gap size of
30.2mm, and that the result of that test
showed a deepening of the
socket. He pointed out that the specifications of the Videx pot,
which were provided to the defendant
in terms of the requirements of
s 69(1) of the Act, clearly stipulate that the recommended gap size
for both pot sizes is 20mm
and that the maximum gap size for both,
which is not to be exceeded, is 50mm. "Gap size" is
expressly defined as the
maximum difference between the cut-to-length
elongate and the stope height at the place where the elongate and the
pot are installed.
He submitted that the gap size used by Prof.
Scheffer for the 183mm pots was outside the gap size specification
for use of the
Videx pot and that those test results are therefore
irrelevant.
[13] Mr Bester did not disagree
with Mr Bowman's submissions, but submitted that it was clear from
the reports of both experts that
if the gap size was increased to
more than 50mm, there would be a shallowing of the socket of the
Videx pot upon inflation.’
In that the learned Judge cannot be faulted.
[13] Before turning to analyse integers (d) and (f), which it was
common cause were essential integers of claim 1 of the patent,
it may
be convenient to first give a description of the Videx pot and its
operation, in order to delimit the areas of dispute between
the
parties in regard to the infringement. In doing so I have not lost
sight of the fact that a patent specification should be
construed
without reference to what the alleged infringer has done (
Selero
(Pty) Ltd & another v Chauvier & another
1984 (1) SA 128
(A) at 137F).
[14] In its particulars of claim, Videx alleges that its pot ‘is
designed and specified to be used in gaps of up to 50mm
between an
external surface and an elongate member which is receivable in a
socket of the Videx pot’. The general structure
of the Videx
pot appears from the enlarged drawing on Annexure B, which has been
attached to this judgment in order to facilitate
an explanation of
its operation. According to the evidence, the Videx pot comprises a
closed vessel (202) comprising a first dish-shaped
component (a
recess component) (204) defining a support locating recess in the
form of a socket (206) wherein a region towards
an end of the
elongate is receivable. The support locating recess has a base (208)
and a cylindrical side wall (the inner wall)
(210). The vessel
further comprises a second dish-shaped component (the opposite
component) (212), which is welded to the recess
component (204). The
opposite component (212) provides a base (214) of the device. The
opposite component (212) also provides an
outer wall (the outer wall)
(216) for the device. The outer wall is spaced radially outwards from
the inner wall (210), to define
at least a portion of a chamber (218)
in the vessel which surrounds the socket (206). An outer end of the
inner wall (210) forms
an annular rim or roof (222) of the component
(204) which connects the inner wall (210) to the outer wall (216).
The Videx pot
further comprises a one-way valve (220) at an inlet to
the chamber (218) for inflating the vessel, which valve is fixed to
the
rim or roof (222). The recess component (204) defines an annular
stiffening groove (224) adjacent to the socket (206). The opposite
component (212) comprises concentric first and second annular folds
(226 and 228). The first fold (226) is located radially inwardly
of
the inner wall (210) and the second fold (228) is located between the
inner wall (210) and the outer wall (216).
[15] Turning then to the essence of the dispute between the parties:
Integer (f) - the ‘means for inflating the vessel to
shallow
the socket’ - is a means for inflating the vessel to deform the
base of the socket upwardly from a position indicated
in figure 2 to
a position indicated in figure 3 of the patent specification.
Approaching the matter sensibly, as one must, that
is the only way in
which this feature of the claim can be understood in the context of
the whole of the body of the complete specification
of the patent. It
is clear from the evidence of Dr Burger that the axial expansion
mechanism of the Videx pot is provided by deformation
of the opposite
component (base of the vessel) downwardly and more particularly the
unfolding under pressure of the first annular
fold and the second
annular fold to provide lift and to load the prop between the Videx
pot and the hanging wall. In contradistinction,
the patent
specification requires that the base of the socket is to deform
upwardly (from the position as depicted in figure 2
to the position
depicted in figure 3 of the patent specification) while the vertical
wall of the socket, because of its curved
profile, rolls evenly
outwardly in the direction of the arrows in figure 3 to load the prop
between the device and the hanging
wall. It may be that the Videx pot
seeks to achieve the same result as the patented device but it does
so in a fundamentally different
way. The Videx pot, by virtue of the
geometry of its foot plate, is designed to straighten upon inflation.
The purpose of the inflating
mechanism of the Videx pot is thus not
to shallow the socket as occurs in the patented device. And as
Diplock LJ observed in
Rodi and Wienenberger AG v Henry Showell
Ltd
1966 RPC 441
(CA) at 467, which was cited with approval by
Nicholas AJA in
Raubenheimer & another v Kreepy Krauly (Pty)
Ltd & another
1987 (2) SA 650
(A) at 656I-657B:
'In construing a modern
specification, to speak of looking for the "substance" or
the "pith and marrow" of the
invention may lead one
erroneously to suppose that the patentee, whatever be the precise
language in which he has framed his claim,
is entitled to a monopoly
of the mechanical or other principle of which his invention makes use
of or the result which his invention
achieves. This is not so. If the
language which the patentee has used in the claims which follow the
description upon its true
construction specifies a number of elements
or integers acting in a particular relation to one another as
constituting the essential
features of his claim, the monopoly which
he obtains is for that specified combination of elements or integers
so acting in relation
to one another – and for nothing else.
There is no infringement of his monopoly unless each and every one of
such elements
is present in the process or article which is alleged
to infringe his patent and such elements also act in relation to one
another
in the manner claimed.'
[16] Moreover, as is made clear by Dr Burger, the Videx pot does not
include the feature of integer (d) of claim 1 of the patent.
The
Videx pot does not have ‘an outer wall which is radially spaced
from the cylindrical wall of the socket with the outer
end of the
socket wall being convexly curved in cross-section onto the outer
wall of the vessel’. The annular rim of the
recess component of
the Videx pot is not convexly curved in cross-section onto the outer
wall but is flat over a substantial part
of its radial extent. It is
the unfolding of the annular stiffening grooves of the Videx pot that
serves to lengthen the device
thereby pushing the footplate down.
There can thus be no ‘rolling outwardly’ of the rim of
the Videx pot as in the
patented device. Louw J was alive to that
distinction when he held:
‘
[22]
The patent specification therefore requires that the base of the
socket be deformed upwardly to shallow the recess while the
vertical
wall of the socket rolls evenly, because of its curved profile,
outwardly to load the prop between the device and the
hanging wall.
According to the summary of Dr Burger's evidence, which is not
disputed by the defendant, the Videx pot operates
according to a
different principle, viz. that the expansion mechanism thereof is
provided by deformation of the base of the vessel
downwardly to
provide lift and to load the prop between the Videx Pot and the
hanging wall.'
[17] In
Stauffer Chemical Co & another v Safsan Marketing and
Distribution Co (Pty) Ltd & others
1987 (2) SA 331
(A) at
342G-J, Corbett JA stated:
'There have been a number of
judgments of this Court dealing with the situation where an alleged
infringer has taken, say, all but
one of the features of the
invention as claimed by the patentee and, as regards that one
feature, has either omitted it or substituted
an equivalent; and the
question has arisen as to whether he should be adjudged to have
infringed the patent in that he has appropriated
the substance or
pith and marrow of the invention. . . . The answer to this question
depends basically on whether the features
of the claimed invention
taken by the alleged infringer represent all the essential integers
of the claim and the feature omitted
or substituted by an equivalent
is an unessential integer. If so, then the alleged infringer may have
infringed, depending on the
nature of the so-called equivalent. If,
on the other hand, the feature omitted or substituted is an essential
integer, then no
infringement has been committed.'
[18] It follows, in my view, that the conclusion of Louw J cannot be
faulted. In the result I would accordingly dismiss the appeal
with
costs, including those consequent upon the employment of two counsel.
_________________
V M PONNAN
JUDGE OF APPEAL
APPEARANCES:
For
Appellant: P Ginsburg SC (with G Marriott)
Instructed
by:
Spoor
& Fisher, Pretoria
Phatsoane
Henney Attorneys, Bloemfontein
For
Respondent: L Bowman SC (with C J van der Westhuizen SC)
Instructed
by:
DM
Kisch Inc, Pretoria
Webbers
Attorneys, Bloemfontein
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