About SAFLII
Databases
Search
Terms of Use
RSS Feeds
South Africa: Supreme Court of Appeal
SAFLII
>>
Databases
>>
South Africa: Supreme Court of Appeal
>>
2021
>>
[2021] ZASCA 22
|
|
Groundprobe Pty Ltd and Another v Reutech Mining (Pty) Ltd and Others (1226/2019) [2021] ZASCA 22; 2021 (3) SA 473 (SCA); 2021 BIP 4 (SCA); [2021] HIPR 175 (SCA) (19 March 2021)
THE
SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Reportable
Case
no: 1226/2019
In
the matter between:
GROUNDPROBE
PTY LTD
FIRST APPELLANT
GROUNDPROBE
SOUTH AFRICA (PTY) LTD SECOND APPELLANT
and
REUTECH
MINING (PTY) LTD
FIRST RESPONDENT
REUNERT
APPLIED ELECTRONIC
HOLDINGS
(PTY) LTD
SECOND RESPONDENT
REUTECH
(PTY) LTD
THIRD RESPONDENT
Neutral
citation:
Groundprobe
Pty Ltd and Another v Reutech Mining (Pty) Ltd and Others
(Case
no 1226/2019)
[2021] ZASCA 22
(19 March 2021)
Coram:
PONNAN, DAMBUZA and
MOLEMELA JJA and LEDWABA and GORVEN AJJA
Heard:
26 February 2021
Delivered:
This judgment was
handed down electronically by circulation to the parties'
representatives via email, publication on the Supreme
Court of Appeal
website and release to SAFLII. The date and time for hand-down is
deemed to be 10:00 am on 19 March 2021.
Summary:
Intellectual property
law – patent – revocation – not involving an
inventive step.
ORDER
On
appeal from:
The Court
of the Commissioner of Patents (Neukircher J):
The
appeal is dismissed with costs, including those of two counsel.
JUDGMENT
Ponnan
JA (Dambuza and Molemela JJA and Ledwaba and Gorven AJJA concurring)
[1]
Over a century
ago,
Lord Herschell
observed
that:
‘
.
. . [T]he mere adaptation to a new purpose of a known material or
appliance, if that purpose be analogous [to a purpose to which
it has
already been applied, and if the mode of application be also
analogous] so that no inventive faculty is required and no
invention
is displayed in the manner in which it is applied, is not the
subjectmatter for a patent.’
[1]
An
observation, that is particularly apt to this appeal, which raises
for consideration the question of whether claims 1 and 27
of the
patent in suit are invalid for lack of inventive step.
[2]
The issue turns on the question of whether it is inventive to mount a
known radar system used to monitor
slope system stability in open
cast mines on a motorised automobile vehicle. This, in circumstances
where the same radar system
was previously mounted on a trailer that
was hitched to a motorised automobile vehicle.
[3]
The matter commenced in the Court of the Commissioner of Patents as a
patent infringement action instituted
by the appellants against the
respondents. The first appellant, Groundprobe Pty Ltd, an Australian
company, is the proprietor of
South African patent 2012/08400 (the
patent) entitled ‘Work Area Monitor’. The second
appellant, Groundprobe South
Africa (Pty) Ltd, is a licensee under
the patent. The appellants claimed relief consequent upon the alleged
infringement of the
patent by one or more of the respondents. The
three respondents are related companies: the first respondent is
Reutech Mining (Pty)
Ltd; the second, Reunert Applied Electronic
Holdings (Pty) Ltd; and the third, Reutech (Pty) Ltd.
[4]
The appellants alleged that the respondents were infringing the
patent by making, using, offering for
sale and selling work area
monitors known as the MSR 060V and MSR 120V systems, both of which
are mine slope monitoring systems
comprising a radar and an
interferometric processor mounted on the back of a light delivery
vehicle (commonly referred to as a
bakkie in this country). The third
respondent admitted that: (i) it manufactured, used, offered for sale
and sold the systems;
(ii) the systems fell within the scope of
product claims 1 to 4, 10, 12 to 14, 16 to 18, 20, 21, 23 and 26 of
the patent; and (iii)
it had carried out the method of claims 27, 28
and 30 of the patent. As a result of these admissions, there has
never been any
dispute between the parties on the question of the
infringement.
[5]
The respondents counterclaimed for revocation of the patent on
several grounds. Neukircher J, sitting
as the Commissioner of
Patents, dismissed the appellants’ action and upheld the
respondents’ counterclaim, finding
that each of the claims of
the patent were obvious to the person skilled in the art of the
patent at the priority date, namely
16 August 2011. On appeal, which
is with the leave of the learned judge, the respondents restrict
themselves to only one ground
for revocation, namely lack of
inventive step.
[6]
The issue is thus whether the invention, to the extent that it
differs from the state of the art, has
inventive merit. Section
25(1) of the
Patents Act 57 of 1978 (the Act)
provides
that, subject to certain limitations and exclusions a patent may 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’.
In terms of s
65(4) of the Act, in any proceedings for infringement
a defendant may
counterclaim for the revocation of the patent and, by way of defence,
rely upon any ground on which a patent may
be revoked.
[7]
In
Roman
Roller CC and Another v Speedmark Holdings (Pty) Ltd
,
[2]
Corbett CJ stated:
‘
One
of the requirements of patentability prescribed by sec 25(1) is that
the new invention must involve "an inventive step".
The
meaning of this term is defined by sec 25(10), the relevant portion
of which reads:
". . . 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 any claim to the
invention, part of the state of the
art by virtue only of subsection
(6) . . ."
[Subsection (6)
provides:]
"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."
As
sec 25(1) indicates, an invention is deemed to involve an inventive
step if it is not obvious to a person skilled in the art,
having
regard to the state of the art at the relevant time. Conversely, if
the invention is obvious to such a person, then the
invention is
deemed not to involve an inventive step and to be invalid on the
ground of obviousness.’
[3]
[8]
Obviousness is a factual question in respect of which the onus rests
on the respondents. This means
that the respondents had to prove that
the patent was not inventive, namely ‘that it was obvious and
not due to any inventive
ingenuity’.
[4]
In
Ausplow
(Pty) Ltd v Northpark Trading 3 (Pty) Ltd
,
[5]
Harms AP quoted from the judgment of Sir Robin Jacob LJ in
Nichia
Corp v Argos Ltd
:
[6]
‘
The
structured approach to considering obviousness is well settled
(see per Oliver LJ in
Windsurfing
v Tabur Marine
[1985]
RPC 59
at 73). I recently restated it in
Pozzoli
[2007] EWCA Civ 588
at
[23]
: (1) (a) Identify the notional “person
skilled in the art”; (b) Identify the relevant common
general knowledge
of that person; (2) Identify the inventive
concept of the claim or if that cannot readily be done, construe it;
(3) Identify
what, if any, differences exist between the matter cited
as forming part of the “state of the art” and the
inventive
concept of the claim or the claim as construed; (4)
Viewed without any knowledge of the alleged invention as claimed, do
those
differences constitute steps which would have been obvious to
the person skilled in the art or do they require any degree of
invention?’
[7]
[9]
The patent in suit relates to a work area monitor that employs radar
to detect movement of a slope and
raise the alarm if dangerous
movement is detected. Slope movement is detected by interferometry.
For some
background:
Slope
stability is a critical safety and production issue for mines. ‘Major
wall failures can occur seemingly without warning,
causing loss of
lives, damage to equipment and disruption to the mining process.’
[8]
Open cast mines often have very substantial mine slope faces, which
can be unstable. Mineworkers are exposed to the dangers associated
with the partial or total collapse of mine walls. It has been known
since at least the 1970s that small precursor movements of
the rock
wall (slope) occur for an extended period (weeks to months) before
the wall collapses.
[9]
Since about the mid-1990s, radar has been employed to monitor mine
slope walls for signs of these precursor movements, thus making
it
possible to predict a major collapse of the wall before it occurs.
The idea of using radar to detect precursor movements (and
sound an
alarm before the collapse of the wall) was commercialised in the
2000s.
[10]
The invention is
embodied in a product produced by the appellant referred to as the
SSR. The features of the SSR are described broadly
in the patent and
in greater detail in
United
States Patent 6,850,183 B2, in respect of a Slope Monitoring System
by Inventors Bryan Reeves et al (the Reeves patent).
The appellants
developed and sold the SSR, while the respondents developed and sold
a product described as the MSR from about 2006.
The MSR slope
monitoring systems that had been sold before the priority date
included the MSR 100, MSR 200 and MSR 300.
[11] The
fact that the SSR was in use before the priority date is acknowledged
in the patent in the section headed ‘background
to the
invention’. It is there stated:
‘
[The
Reeves patent] describes a slope monitoring system that consists of a
radar module that records radar images of a selected
slope and a
video module that records visual images of the same slope. A data
processor performs coordinate registration to align
the radar images
and the visual images. Slope movement is detected by interferometry.
The invention is embodied in a product produced
by GroundProbe Pty
Ltd that is referred to as the SSR.
The
SSR product has been used very successfully to monitor the stability
of large slopes in open-cut mines. The SSR has detected
and provided
an alarm prior to many hundreds of large slope failures and is widely
recognised as an essential mine safety tool.
Nonetheless, the SSR is
not ideal for all situations.’
[12]
The MSR and SSR are both work area monitors, which include a radar,
interferometric processor and stabilisation
apparatus mounted on a
non-automated vehicle, such as a trailer. The radar module scans a
selected field of view and collects radar
images. The processor
processes the radar images interferometrically to extract and analyse
slope movement data. The stabilisation
apparatus eliminates
disturbances caused by movement. The stabilisation apparatus of the
MSR 200 and 300 systems consisted of three
extendable legs –
two at the rear and one at the front of the trailer, which served to
level the trailer when in use and
reduce disturbances caused by wind
and trailer movement. The SSR had a more complicated stabilisation
system, which took much longer
to deploy than that used on the MSR.
It involved deploying one set of legs to lift the trailer and the
radar, dropping another
set of legs to the ground which supported
only the radar and then separating the trailer from the radar by
lowering the trailer
to the ground.
[13]
Whether a patent is actually inventive depends on the expert evidence
establishing the common general knowledge
of the person skilled in
the art and the teaching of the cited prior art.
[10]
Three experts were called by the parties: (a) Dr Declan Vogt, an
electrical engineer with particular experience in ground-penetrating
interferometric radar systems; (b) Professor Pieter van der Walt, the
former Dean of the Faculty of Engineering and now Emeritus
Professor
of Stellenbosch University, who has been involved in the development
and testing of radar systems (including mining radar
systems for the
detection of slope movement) for several decades; and (c) Mr
Cornelius Nel, a mechanical engineer. The first testified
on behalf
of the appellants, the other two for the respondents.
[14]
However, as shall presently become apparent, the patent does not
disclose any advance in radar technology. The
patent is not therefore
addressed to a person having a particular expertise in radar. The
person skilled in the art of the patent
is, rather, a mechanical
engineer with experience in mounting and stabilising radar systems.
Mr Nel was thus the only expert qualified
to give evidence on the
question of inventive step. The court below therefore correctly
disregarded the evidence of Dr Vogt and
Professor van der Walt
insofar as it related to inventive step. The evidence appertaining to
inventive step led by the respondents
(through Mr Nel) thus stands
uncontradicted.
[15]
The inventive step of the patent must be found in the claims.
[11]
Claim 1 is the product claim. Claim 27 is the method used, when
deploying the system of claim 1. Claim 1 is broadly framed. It
claims:
‘
A
Work Area Monitor comprising:
a radar module that
scans a selected field of view and collects radar images;
a processor that
processes the radar images interferometrically to extract slope
movement data and analyse the slope movement data;
a motorised
automobile vehicle mounting the radar module and the processor; and
a
stabilisation apparatus that eliminates disturbances caused by
vehicle movement.’
[16]
Claim 27 is similarly very broad. It covers:
‘
A
method of scanning a work area for slope failure including the steps
of:
positioning and
stabilising a motorized automobile vehicle adjacent a slope to be
monitored for failure in a work area;
directing a field of
view of a radar module mounted on a motorized vehicle at the slope;
selecting a region
of slope to be monitored with the field of view;
collecting
and interferometrically processing radar images to produce slope
movement.’
[17]
The appellants contend that the invention claimed is the combination
of a number of elements that interact in a
particular manner.
Accordingly, so the contention proceeds, the combination should not
be dissected into its constituent elements
and each element examined
in order to see whether its use was obvious or not, the real question
being whether the combination was
obvious or not.
[12]
[18]
It bears noting that here, however, the method described is no
different to that used when the MSRs and SSRs were
deployed, save
that the radar module is said to be mounted on a motorised automobile
vehicle, whereas the MSR and SSR systems were
mounted on a trailer.
When regard is had to the difference between claims 1 and 27, on the
one hand, and the MSR or SSR, on the
other, it would be fair to say
that the only conceivable candidate for inventive step lay in the
idea of mounting a radar used
for monitoring slopes on a motorised
automobile vehicle. The inventive step must therefore relate to this
feature.
[19]
There are various examples in the record of radar mounted on the back
of vehicles. Radars used in other applications,
such as in the
military, have been mounted on motorised automobile vehicles since at
least World War II. The evidence showed that:
(i) the same mounting
platforms are often used in both military and mining applications;
(ii) there is a cross-pollination of ideas
between the military and
mining; (iii) it is common for ‘innovations’ first
devised for military use to be later used
in industrial applications;
and (iv) military and mining systems are frequently marketed
together. Prior art military radar systems
are therefore clearly
relevant and regard would be had to them by the skilled person in
developing other types of radar systems.
Indeed, the evidence
revealed that ‘radar engineers have been placing radars on
vehicles for many, many years’.
[20]
The appellants seek to make much of the stabilisation feature of
claim 1. They contend that it is not merely the
idea of moving the
radar from the trailer onto the bakkie that constitutes the
invention, but also overcoming an alleged ‘stability’
problem associated with using a bakkie to deploy a radar and an
interferometric radar. However, the requirement in claim 1 that
the
system includes stabilisation apparatus, to eliminate disturbances,
including those caused by movement of the vehicle, is true
of most
radar systems, including the SSR and MSR. The inventive concept
cannot therefore reside in the fact that the system includes
a
stabilisation apparatus that eliminates disturbances. As the evidence
reveals stabilising the radar is a ‘physical fact’.
[21]
According to the evidence, the stabilisation system on the SSR
‘eliminated disturbances caused by vehicle
movement’ by
separating the radar from the vehicle in question. Once this is so,
it does not matter what vehicle one uses
to deploy the radar –
the method of elimination or stabilisation will be effective in
respect of all vehicles. Importantly,
both parties used the identical
stabilising effect on their bakkie mounted system, as they had used
on their trailer mounted system.
They took the stabilising apparatus
that they had used in their trailer-based systems, which were in the
public domain at the priority
date of the patent, and simply deployed
them as they had previously done, but on a bakkie as opposed to a
trailer. In truth, stabilisation
was never an issue, having been
resolved in the prior art.
[22]
There can thus be no doubt that the only conceivable candidate for
the ‘inventive concept’ is the idea
of mounting a radar
used for monitoring slopes on a motorised automobile vehicle. I do
not think that this can be said to constitute
a step forward upon the
state of the art and least of all a step that is inventive.
Nothing
therefore remains of the patent. To borrow from
Davis
AJA in
Miller
v Boxes & Shook
:
‘
After
all, while it is just and in the public interest that a patent should
be granted if the objector fails to discharge the
onus
of
establishing some one or more of his grounds of objection, it is
clearly not in the public interest that patents should be granted
indiscriminately for socalled inventions, where, taking
everything into consideration, there exists a sufficiently strong
probability that they are not really inventions at all; these
should not be allowed even temporarily to hamper the trade and
industry of the country.’
[13]
[23]
In the result the appeal must
fail and it is accordingly dismissed with costs, including those of
two counsel.
_________________
V
M Ponnan
Judge
of Appeal
APPEARANCES
For
appellants:
AR
Sholto-Douglas SC (with him KD Iles)
Instructed
by:
Von Seidels
Attorneys, Cape Town
Webbers Attorneys,
Bloemfontein
For
respondents:
P Ginsburg SC
(with him G Marriott)
Instructed
by:
Spoor
& Fisher Attorneys, Centurion
Matsepes Attorneys,
Bloemfontein
[1]
Morgan
and Co v
Windover
and Co
[1890] 7 RPC 131
(HL) at 137.
[2]
Roman
Roller CC and Another v Speedmark Holdings (Pty) Ltd
1996
(1) SA 405 (SCA).
[3]
Roman
Roller CC
fn 2 above at 209-210.
[4]
B-M
Group (Pty) Ltd v Beecham Group Ltd
1980
(4) SA 536
(A) at 557D-E.
[5]
Ausplow
(Pty) Ltd v Northpark Trading 3 (Pty) Ltd and others
[2011]
ZASCA 123
;
[2011]
4 All SA 221
(SCA) para 34.
[6]
Nichia
Corp v Argos Ltd
[2007] EWCA Civ 741
paras 12-16.
[7]
In
Ensign-Bickford
(South Africa) (Pty) Ltd and Others v AECI Explosives and Chemicals
Ltd
1999
(1) SA 70
(SCA),
Plewman
JA restated the enquiry 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?’
[8]
United
States Patent 6,850,183 B2.
[9]
D
C Wyllie and C W Mah
Rock
Slope Engineering
4 ed (2004) at 329-331; United States Patent 6,850,183 B2.
[10]
Ausplow
(Pty) Ltd v Northpark Trading 3 (Pty) Ltd
fn
5 above
para
28. In
Marine
Construction
and Design Company v Hansen’s Marine Equipment (Pty) Ltd
1972
(2) SA 181
(A) at 193A, Botha JA stated:
‘
The
test whether an invention lacks subjectmatter and is invalid
for obviousness, has been authoritatively stated to be whether
or
not the ordinary person skilled in the relevant art could, if faced
with the problem solved by the invention, and having regard
to what
was common knowledge in the art at the time, and using his
intelligence, easily have provided the solution or taken the
step
taken by the patentee (
Veasey's
case,
supra
at
pp. 269 71; and
Gentiruco
v Firestone, supra
at
pp. 223 and 227).’
[11]
As
it was put in
Ausplow
v Northpark
fn
5 above para 32:
‘
The question
whether an invention is new or inventive is determined with
reference to the invention claimed in each claim and
not in relation
to the description of the invention in the body of the
specification.’
This
was reaffirmed in
Sandvik
Intellectual Property AB v Outokumpu OYJ and Another
[2019] ZASCA
115
;
2020 (4) SA 441
(SCA)
in
these terms:
‘
A
claim is a portion of the specification which fulfils a separate and
distinct function. It, and it alone, defines the monopoly;
and the
patentee is under a statutory obligation to state in the claims
clearly and distinctly what is the invention which it
desires to
protect.’
[12]
In
De
Beers Industrial Diamond Division (Pty) Ltd v Ishizuka
1980
(2) SA 191
(T)
at 201C-E, Nicholas J quoted the following with approval from
Albert
Wood and Amicolite v Gowshall Ltd
(1937)
54 RPC 37
at
40:
‘
The
dissection of a combination into its constituent elements and the
examination of each element in order to see whether its
use was
obvious or not is, in our view, a method which ought to be applied
with great caution since it tends to obscure the fact
that the
invention claimed is the combination. Moreover this method also
tends to obscure the fact that the conception of the
combination is
what normally governs and precedes the selection of the elements of
which it is composed rather than that the
obviousness or otherwise
of each active selection must in general be examined in the light of
this consideration. The real and
ultimate question is: Is the
combination obvious or not?’
[13]
Miller
v Boxes & Shook (Pty) Ltd
1945 AD 561
at 581.