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[2011] ZASCA 123
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Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and Others (742/10) [2011] ZASCA 123; 2011 BIP 12 (CP); [2011] 4 All SA 221 (SCA) (7 September 2011)
THE
SUPREME COURT OF APPEAL
OF
SOUTH AFRICA
JUDGMENT
Case No: 742/10
In
the matter between:
AUSPLOW (PTY) LTD
…..................................................................................
Appellant
and
NORTHPARK TRADING 3
(PTY) LTD
…............................................
First
Respondent
THE REGISTRAR OF
PATENTS
…...............................................
Second
Respondent
MARAIS ENGINEERING
(PTY) LTD
….............................................
Third
Respondent
MARAIS STEYN
…...........................................................................
Fourth
Respondent
Neutral citation:
Ausplow v Northpark Trading
(742/10)
[2011] ZASCA 123
(7
September 2011)
Coram:
Harms AP, Ponnan, Snyders and Malan JJA and Plasket AJA
Heard:
18 August 2011
Delivered:
07 September 2011
Summary:
Patents – application to amend to cure invalidity -
obviousness
___________________________________________________________________
ORDER
___________________________________________________________________
On appeal from:
Court
of the Commissioner of Patents (Murphy J sitting as court of first
instance):
A. The appeal is upheld
with costs (jointly and severally against the first, third and fourth
respondents), including the costs
of two counsel.
B. Paragraphs 3, 4 and 5
of the order of the Court of the Commissioner of Patents are set
aside and replaced with the following:
‘
3
The application to amend the specification of Patent ZA 95/0812 is
granted.
4
The
provisional order of revocation lapses.
5
The parties are to pay their own costs.’
___________________________________________________________________
JUDGMENT
___________________________________________________________________
HARMS AP (PONNAN, SNYDERS
and MALAN JJA and PLASKET AJA concurring)
INTRODUCTION
[1] This is an appeal
against a judgment by the Commissioner of Patents (Murphy J) who
dismissed an application by the appellant,
Ausplow (Pty) Ltd, an
Australian company (the patentee), to amend its patent ZA
95/0812
entitled
‘
Improvements in or
relating to seeding machinery’.
1
The patent application was filed on 2 February
1995 and proceeded to grant on 29 November 1995, claiming priority
from an Australian
patent application. The appeal is with leave of
the learned commissioner.
2
[2]
The background to the application for amendment is this. The patentee
instituted an infringement action against the first respondent,
Northpark Trading 3 (Pty) Ltd, alleging infringement of ‘the
claims’ of the patent.
3
The
patent has 15 claims: claims 2 to 12 are directly or indirectly
dependent on claim 1 while claim 13, although based on claims
1 to 7,
contains an added aspect that is, for the purposes of this judgment,
of special importance. Claims 14 and 15 are omnibus
claims and do not
require consideration.
[3]
Northpark, while denying infringement, counterclaimed for the
revocation of the patent on a number of grounds but for present
purposes it is only necessary to mention two, namely lack of novelty
and obviousness. Southwood J, sitting as Commissioner of Patents,
was
called upon to consider the issues of validity and infringement in
relation to claim 1 only. He concluded in a detailed judgment
that
claim 1 was valid and infringed and issued a certificate of
validity.
4
[4]
Northpark lodged an appeal to this court, which upheld the appeal on
the basis that the invention claimed in claim 1 was obvious.
5
The
judgment was marked ‘not reportable’ and I shall refer
thereto in the course of this judgment as the SCA judgment.
Because
no other claim was in issue it was not necessary for the SCA to
express any view on the issue of infringement. It consequently
upheld
the counterclaim
and,
subject to the following, the patent was revoked:
‘
The order
[for revocation] is provisional. It will become fully operative if
the patentee does not within one month file notice
of an application
to amend the patent, or, having filed such application, withdraws it.
If an application as aforesaid is made
and not withdrawn, it shall be
decided at the hearing of such application whether or not the
revocation order is to be put into
operation.’
[5] This order was,
according to the judgment, justified on the following basis:
‘
We were
asked by counsel for the [patentee], if that were to be our finding,
to postpone the order of revocation to enable the patentee
to effect
amendments to the specification, as contemplated by s 68 of the Act.
The appellant’s counsel advanced no adequate
reason why that
should not be done.’
6
There may have been a
misunderstanding between counsel and court because
s 68
of the
Patents Act 57 of 1978
could not underpin the eventual order.
7
For
s 68
to have had
application the SCA should, in addition, have found one or other
claim valid and infringed, something the court did
not consider or
hold.
[6] The reference to
s 68
gave rise to a number of disputes, futile litigation and unnecessary
side issues, all mentioned in the judgment of Murphy J. It
is not
necessary to revisit them because the answer appears to me to be as
follows. In cases where a patent is found to be invalid,
whether
partially or in the whole, and
s 68
does not apply, it is customary
for courts to afford the patentee an opportunity to apply for an
amendment which may save the patent.
This court has, in the past,
relied on
s 61(3)
of the Act for justifying such an order:
Ensign-Bickford
(SA) v AECI Explosives and Chemicals
1999
(1) SA 70
(SCA) at 84D-E. The provision gives the commissioner, when
dealing with an application for revocation of a patent, a discretion
to ‘decide whether the patent shall be revoked or whether and,
if so, subject to what amendments, if any, of the specification
or
claims thereof, the patent shall be upheld’. A party
counterclaiming for revocation of a patent in terms of
s 65(4)
‘applies’ for all intents and purposes in a prescribed
manner for its revocation
(s 61(1)).
It is therefore not necessary to
rely on the doubtful proposition put forward by the respondents that
the order under consideration
could have been made with reference to
an inherent jurisdiction.
[7] If regard is had to
the whole of the SCA judgment and not to the quoted paragraph only,
it is in my view clear that the reference
to
s 68
instead of
s 61
was
an error which did not affect the clear language of the order:
Firestone
SA (Pty) Ltd v Gentiruco AG
1977
(4) SA 298
(A) at 304D-H.
[8] In the general course
of events, if issues of lack of novelty and obviousness arise, courts
as a matter of logic first decide
the novelty issue and then
obviousness:
Ensign-Bickford
(SA) (Pty) Ltd
at
80E-F. Furthermore,
if
courts find that a patent is invalid on one ground, for instance, on
the ground of lack of clarity (ambiguity) or, as in this
case,
obviousness, they normally consider the other grounds of invalidity
as well for the sake of not only questions of costs but
in relation
to the suspension of the revocation order and the later amendment
application:
Gentiruco
AG
at
645. The court that subsequently has to deal with the amendment
application has to know what the trial or appeal court’s
findings in relation to the other aspects were.
The
SCA did neither and this gave rise to an anxious analysis by Murphy J
of the SCA judgment in the light of that of Southwood
J in an attempt
to understand the scope of the SCA findings and its reasons for
overruling the latter. For reasons that will become
apparent it is
not necessary for purposes of this judgment to revisit those issues.
[9]
The factual finding of the SCA that claim 1 in its unamended form is
invalid on the ground of obviousness stands and this judgment
proceeds from that premise. The issue in this case is accordingly
whether the application to amend claims 1 and 13 should have
been
granted by Murphy J. This involves a number of distinct inquiries:
(a) whether the patentee complied with the order of the
SCA quoted;
(b) whether the proposed amendments conflict with the provisions of
s
51(6)
or (7) of the Act;
8
(c)
almost invariably, whether the patent as amended will be valid; and
(d) whether there are reasons why the court’s discretion
to
refuse an amendment that is otherwise in order should be exercised.
It is not disputed that, as far as (a) and (b) are concerned,
the
onus of compliance rests on the patentee and that, as far as (c) is
concerned, the onus of continuing invalidity rests on the
objector:
Water
Renovation (Pty) Ltd v Gold Fields of South Africa Ltd
[1993] ZASCA 169
;
1994 (2) SA
588
(A) at 593J-594F. As to (d), the onus rests on the objector to
establish the facts that would entitle the court to refuse the
amendment:
compare Interfelt Products (Pty) Ltd v Feltex Ltd
1972 (3)
SA 335
(T) at 342H-343A.
[10] The argument that
the application for amendment had to be made to the registrar of
patents in terms of
s 51
and not to the Commissioner was rightly
rejected by Murphy J and it was not argued that he had erred in that
regard. There was
otherwise due compliance with the court order. As
far as (b) is concerned, the respondents in two affidavits filed on
their behalf
and sworn to by Mr Marais Steyn, who is the managing
director of the first and third respondents and who is, in his
personal capacity
the fourth respondent, admitted unequivocally that
the application for amendment was not in conflict with the mentioned
provisions.
In spite of this the respondents sought to argue in the
context of invalidity that the new claims are not fairly based on the
matter
disclosed in the specification. The respondents submitted that
they were entitled to do so because this question is a legal issue
and not factual and that the admission was accordingly not binding.
Nicholas AJA disposed comprehensively of an identical argument
in
Water Renovation (Pty) Ltd at 604J- 608B and the issue need not be
revisited. Another submission, which was made in the heads
but not
adverted to during argument, was that the patentee had failed to
provide full reasons for the amendment (as if everyone
did not know
what they were). Since the submission was made with reference to a
judgment that had been overruled by this court
in Kimberly-Clark of
SA (Pty) Ltd (formerly Carlton Paper of SA (Pty) Ltd) v Proctor &
Gamble SA (Pty) Ltd
1998 (4) SA 1
(SCA) no more need be said about
the matter.
[11]
The respondents submitted at the outset that Murphy J had exercised a
discretion by refusing the application and that this
court is not
entitled to interfere with that exercise except in very limited
circumstances. The first point is that the learned
commissioner did
not purport to exercise his discretion. He found that the amendments
sought would not cure the invalidity of the
patent. If an amendment
fails at hurdles (a) or (b), that is usually the end of the matter.
Discretion does not arise. The same
(possibly subject to what van
Dijkhorst J said in Deton Engineering (Pty) Ltd v JP McKelvey
1997
BIP 113)
applies
at hurdle (c). It is only if that is passed that the discretion to
refuse can arise. Whether a court has a discretion in
the strict
sense to refuse an amendment has not yet been decided and need not be
decided: Media Workers Association of SA v Press
Corporation of SA
Ltd ('Perskor')
[1992] ZASCA 149
;
1992 (4) SA 791
(A) at 797E-G; Knox D’Arcy Ltd
v Jamieson
[1996] ZASCA 58
;
1996 (4) SA 348
(A) at 360D-362E.
THE INVENTION
[12]
As the title of the specification indicates, the invention relates to
improvements to agricultural seeding machinery. For some
background:
the conventional steel ploughshare, famously invented by John Deere,
tills the soil by turning it over and thereby
cuts furrows for
planting. More recently, a no-till farming method has taken hold.
Chisel
ploughs
in the form of elongated
pointed chisels or sharp prongs (referred to as tines in the
specification) are mounted onto a frame which
is drawn behind a
tractor. As appears from the prior art, seed planters and fertilizer
dispensers are often attached to the chisel
plough sequentially,
enabling ploughing, fertilizing and planting to take place in a
single operation.
[13] Under the heading
‘Object of the invention’ the patentee stated:
‘
It has been
found in practice that tined seeding machinery and attachments have
difficulty in penetrating soil deeply whilst at
the same time
maintaining accurate placement of seed and fertilizer. Due to the
undulating ground conditions nearly always encountered,
and with
seeding depth controlled by widely spaced ground wheels, seeding
depth cannot be maintained, often with seed and fertilizer
placed
together on a hard impenetrable barrier causing poor seed
germination, loss of plant vigour, low yields, poor water
infiltration,
waterlogging and fertilizer toxicity and a greater
incidence of disease.’
The object of the
invention, the specification states, is to overcome or substantially
ameliorate these disadvantages.
Nugent
JA gave this description in the SCA judgment:
‘
The
machinery is designed for planting seeds in untilled soil. It is
essentially a frame that is dragged behind a tractor on which
a
series of tools are mounted in a line one behind the other each
performing one of a series of functions. First in line is a tine
(or
share) that cuts a slot in the untilled soil. Optionally, a tube
might be mounted behind the tine, through which fertilizer
may be
deposited in the slot. Behind the tube is a device of one kind or
another that collapses soil into the slot so as to partially
fill it,
which serves a dual purpose: the collapsed soil separates the
fertilizer (if fertilizer is used) from the seed and avoids
the seed
being burnt, and it forms a suitable bed upon which to deposit the
seeds. Behind that tool is another vertically-mounted
tube through
which seeds are deposited on the bed. And behind that is a wheel,
wider than the slot, which dislodges more soil from
the sides of the
slot, covering the seed, and simultaneously tamping it down to ensure
that the seed is in good contact with the
surrounding soil.’
THE PROPOSED AMENDMENT
[14] The patentee did not
seek to effect any amendments to the body of the specification but
only to claims 1 and 13. In addition,
the omnibus claims are to be
deleted but nothing turns on this.
The
object of the proposed amendments to claim 1 is to limit its scope
through the introduction of an integer of the original claim
13 into
claim 1. The amended claim 13 is not much different.
[15] It is not necessary
to quote the original claim 1 because its terms are apparent from the
proposed amended claim 1, which reads
as follows (the insertions are
in bold and the deletion is indicated):
‘
A
seeding assembly to be used with a plough frame supporting at least
one plough tine, said assembly comprising:
(A)
a seeding tube (i) to extend downwardly into a slot formed in a soil
layer by the
tine, (ii) said tube having a lower extremity through
which seed is delivered into the soil layer;
(B)
a closing tool (i) fixed with respect to said lower extremity and
having a leading surface forward thereof relative to the normal
direction of travel of the frame over the soil layer, (ii) said
closing tool being aligned in said direction with respect to said
lower extremity so that it engages soil adjacent said slot to
dislodge the soil to partly close the slot and provide a seed bed
onto which seed leaving said lower extremity is delivered;
and
(C)
a
first
mounting
means to attach the tube and closing tool to the frame to permit
height adjustment of the tube and the closing tool with
respect to
the frame;
and
(D)
ground engaging means operatively associated with the tube and
closing tool to engage the soil layer to cause said height
adjustment;
and
(E)
a
second mounting means, which is adjustable for adjustably attaching
the ground engaging means to the tube and closing tool thereby
enabling said ground engaging means to effect said height
adjustment.’
The numbering of integers
has been added for the sake of convenience but is simpler than that
used by the previous courts and by
counsel.
[16] The proposed claim
13 is in these terms:
‘
In
combination, a plough tine having a lower extremity to which there is
attached a digging blade, a fertilizer tube and a seeding
assembly to
be used with a plough frame supporting at least the plough tine, said
assembly comprising:
a
seeding tube to extend downwardly into a slot formed in a soil layer
by the tine, said tube having a lower extremity through which
seed is
delivered into the soil layer;
a
closing tool fixed with respect to said lower extremity and having a
leading surface forward thereof relative to the normal direction
of
travel of the frame over the soil layer, said closing tool being
aligned in said direction with respect to said lower extremity
so
that it engages soil adjacent said slot to dislodge the soil
9
to partly
close the slot and provide a seed bed onto which seed leaving said
lower extremity is delivered;
a
first mounting means to attach the tube and closing tool to the frame
to permit height adjustment of the tube and the closing
tool with
respect to the frame;
wherein
said first mounting means is adapted to be attached to the tine in
order to be attached to the frame;
ground
engaging means operatively associated with the tube and closing tool
to engage the soil layer to cause said height adjustment
wherein
the digging blade, fertilizer tube, closing tool, seeding tube and
ground engaging means are aligned in that order in the
intended
direction of travel;
wherein
said digging blade, closing tool and ground engaging means each have
an operative width, with the operative width of said
digging blade
being narrower than the operative width of said closing tool and with
the operative width of said closing tool being
narrower than the
operative width of said ground engaging means;
a
second mounting means, which is adjustable for adjustably attaching
the ground engaging means to the tube and closing tool thereby
enabling said ground engaging means to effect said height adjustment;
and
wherein
the seeding assembly is directly attached to the tine, so as to be
movable relative thereto to provide said height adjustment.’
OBJECTIONS TO THE
AMENDMENT
[17] The main objections
to the amendment are based on continuing obviousness and, in the
alternative, culpable delay and reprehensible
conduct. Before dealing
with these it might be convenient to dispose of other allegations
concerning continuing invalidity.
[18]
The first is that the invention as illustrated or exemplified cannot
be performed or lead to the advantages and results set
out in the
complete specification
(s 61(1)
(d)
).
This objection is based on the fact that in some countries integer C
of claim 1 of the corresponding claim contains at the end
the words
‘and tine’, reading
‘
a
first mounting means to attach the tube and closing tool to the frame
to permit height adjustment of the tube and the closing
tool with
respect to the frame
and
tine
.’
As a result of the
omission of the tine the argument was that the amendment does not
include a limitation which permits height adjustment
of the seeding
tube and closing tool relative to the tine but only relative to the
frame. What the argument ignored is the fact
that the plough frame
supports the tine and that the first mounting means attaches the tube
and the closing tool with respect to
the frame. As the tine is
supported by the frame, height adjustment of the tube and the closing
tool with respect to the frame
will result in height adjustment of
the tube and closing tool relative to the tine. Simply put, the tine
is attached to the frame
and if the frame’s height is adjusted
so is that of the tine.
[19]
Other objections relate to lack of clarity
(s 61(1)
(f)
(i)).
A surprising aspect of the objections under this heading is that what
was clear at the time of the infringement action is
no longer clear.
Another amazing aspect is that the respondents’ expert, Mr
Steyn, in his affidavit on behalf of Northpark
apparently understood
the claims but when he filed his affidavit on his and the third
respondent’s behalf some ten months
later it all became opaque.
[20]
Since patent cases are about construction and not deconstruction of a
text it might be useful to have regard to this statement:
10
‘
The board
adds that the skilled person when considering a claim should rule out
interpretations which are illogical or which do
not make technical
sense. He should try, with synthetical propensity i.e. building up
rather than tearing down, to arrive at an
interpretation of the claim
which is technically sensible and takes into account the whole
disclosure of the patent (Article 69
EPC). The patent must be
construed by a mind willing to understand not a mind desirous of
misunderstanding.’
[21] The first issue
relates to the preamble of claim 13, which is in these terms:
‘
In
combination of a plough tine having a lower extremity to which there
is attached a digging blade, a fertilizer tube and a seeding
assembly
. . . .’
The claim them proceeds
to recite the integers of claim 1. The complaint is that it is not
worded as is the US claim:
‘
a plough
tine having attached to it a fertilizer tube and seeding assembly of
claim 1, as well as a digging blade attached to the
lower extremity
of the tine.’
I fail to see the
difference between the two.
[22] Integer D is about
‘
a
first mounting means to attach the tube and closing tool to the frame
to permit height adjustment of the tube and the closing
tool with
respect to the frame’. The respondents say that they do not
know where to find this mounting means. The integer
is in my view
clear. It is a means to attach the tube and closing tool to the frame
in such a manner that they can be adjusted
in relation to the frame.
Had there been evidence that the skilled person in the art could not,
with reference to the specification,
construct such apparatus an
argument of insufficiency could have been made but not one of lack of
clarity.
[23] The last complaint
relates to integer E:
‘
a
second mounting means, which is adjustable for adjustably attaching
the ground engaging means to the tube and closing tool thereby
enabling said ground engaging means to effect said height
adjustment.’
The case for the
respondents is that it is not clear from the wording of this integer
exactly how the second mounting means enables
the ground engaging
means to effect the height adjustment. This, too, smacks of an
allegation of insufficiency without evidence
to sustain it. The
patentee’s response was that the second mounting means allows
for the attachment of a wheel (the ground
engaging means) to the tube
and closing tool in such a manner that the relative position of the
wheel to the tube and closing tool
is adjustable; and it is not the
mere presence of the wheel that enables height adjustment but the
fact that the wheel is attached
to the tube and closing tool.
Respondents’ counsel did not deal with the response and I do
not know why it is wrong.
OBVIOUSNESS: SOME LEGAL
CONCEPTS
[24] As mentioned, Murphy
J held that the amendment could not be granted because it would not
cure the invalidity of the patent
on the ground of obviousness.
Before dealing with the facts of the case it might be useful to
restate some basic legal principles
that appear to have been
overlooked and that impact on the case.
[25]
As was explained in
Roman Roller CC v
Speedmark Holdings (Pty) Ltd
[1995] ZASCA 78
;
1996 (1)
SA 405
(A) at 412H-413D,
a patent may be
granted ‘for any new invention which involves an inventive
step’
(s 25(1)).
(In what follows I am dealing in a simplified
manner with only those provisions that are relevant for this
judgment.) A patent
may be revoked on the ground ‘that the
invention concerned is not patentable under
section 25
’ (s
61
(1)
(c)
and
s 65(4)).
There are, accordingly, two relevant requirements for
patentability. The first is that the invention must be new. This
means that
the invention does not form part of the prior art (‘the
state of the art’). The provision requires identity between
the
claimed invention and the state of the art. The state of the art
‘comprises 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’
(s
25(6)).
If the invention does not from part of the prior art, it is
deemed to be new
(s 25(5)).
[26]
The second requirement, which is based on the assumption that the
invention is new (an aspect alluded to earlier in this judgment),
is
that it must involve ‘an inventive step’. An invention is
‘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’ at the relevant time
(s 25(10)).
In other words, the issue is whether the invention, which differs
from the state of the art, has inventive merit. This means that
the
respondents had to prove that the patent as amended was not
inventive, ie, ‘that it was obvious and not due to any
inventive
ingenuity’:
B-M Group
(Pty) Ltd v Beecham Group Ltd
1980
(4) SA 536
(A) at 557D-E.
[27]
The requirement of inventiveness was formulated differently in the
repealed Patents Act 37 of 1952 (s 23(1)
(d)
). The first
difference is that in the past the inventive step was measured
against the ‘common knowledge in the art’
only and not
against the more formally defined state of the art as in the current
Act. This difference does not impact on the present
case.
[28]
The second difference is that the 1952 Act simply asked whether the
invention was obvious in that it involved no inventive
step and not,
as the current Act does, whether it was not obvious
to a person
skilled in the art.
Against an identical legislative backdrop,
Sir Donald Nicholls VC said the following in
Mölnlycke AB v
Proctor & Gamble Ltd
[1994] RPC 49
at 112-113:
‘
Under the
statutory code (which is further confirmed in its completeness by
sections 74 and 72) the criterion for deciding whether
or not the
claimed invention involves an inventive step is wholly objective. It
is an objective criterion defined in statutory
terms, that is to say
whether the step was obvious to a person skilled in the art having
regard to any matter which forms part
of the state of the art as
defined in section 2(2). . . . The statute has laid down what the
criterion is to be: it is a qualitative
not a quantitative test. . .
.
The Act requires the court to make a
finding of fact as to what was, at the priority date, included in the
state of the art and
then to find again as a fact whether, having
regard to that state of the art, the alleged inventive step would be
obvious to a
person skilled in the art.
In applying the statutory criterion
and making these findings the court will almost invariably require
the assistance of expert
evidence. The primary evidence will be that
of properly qualified expert witnesses who will say whether or not in
their opinions
the relevant step would have been obvious to a skilled
man having regard to the state of the art. All other evidence is
secondary
to that primary evidence. In the past, evidential criteria
may have been useful to help to elucidate the approach of the common
law to the question of inventiveness. Now that there is a statutory
definition, evidential criteria do not form part of the formulation
of the question to be decided.’
[29] This court, in
Ensign-Bickford
(SA) (Pty) Ltd at 81E-F, quoted the last paragraph with approval but
I believe that the preceding ones are necessary
for context and they,
in addition, emphasize that one is concerned with a factual issue. A
court has ‘
to
find again as a fact whether, having regard to that state of the art,
the alleged inventive step would be obvious to a person
skilled in
the art’. This conforms to what Lord Reid tersely stated in
Technograph
Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd
[1972] RPC 346
at 362:
‘
But the
question is not whether it is now obvious to the court (or to the
jury) but whether at the relevant date it would have been
obvious to
the unimaginative skilled technician.’
[30] Dealing with the
reliance in
Ensign-Bickford
(SA) (Pty) Ltd on the statement of the Vice-Chancellor, this court in
Schlumberger Logelco Inc v Coflexip
2003 (1) SA 16
(SCA) para 34
said, as far as is relevant for present purpose, this:
‘
It
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, which constitutes the primary evidence. It is clear from a
reading of the
Ensign-Bickford
case, at 81D-83A, that the Court
considered the question of obviousness on that basis. The technical
evidence of the witnesses was
considered without any reference to
their opinions as to whether the invention was obvious. Expert
witnesses who are either of
the opinion that the invention is obvious
or that it is not obvious would almost invariably give the primary
technical evidence.
In these circumstances it may sometimes be
difficult to avoid them expressing the conclusion that the step is
either obvious or
not obvious, but that would do no harm so long as
it is borne in mind that that conclusion is immaterial.’
[31]
The inventive step has often been referred to as a step forward but
that term is misleading. A new analgesic need not be as
good as or
better than the century-old Aspirin in order to be inventive. The
seeding apparatus of the patent in suit may do the
same as other
seeding machines but provided it does it in a sufficiently different
manner it may be inventive:
B-M
Group (Pty) Ltd
at
557A-D.
[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: compare
Netlon
Ltd v Pacnet (Pty) Ltd
1977
(3) SA 840
(A) at 861H-862B;
Ensign-Bickford
(SA) (Pty) Ltd at 81C-D
.
A particular claim may also embody more than one invention in which
event the question would be whether the particular embodiment
lacks
novelty or inventiveness.
[33]
The Act does not require that the inventive step be stated in the
body of the specification or, if stated, that it should have
been
correctly stated. As was said in
Ensign-Bickford
(SA) (Pty) Ltd at 82E-F:
‘
Secondly
the questions themselves were not properly directed to the invention
defined by the claims. The objection of lack of inventiveness
is not
an objection to "teaching" in the body of the
specification. It is the claims which must be considered . . .’
[34]
It is useful to quote in this regard from the judgment of Sir Robin
Jacob LJ in
Nichia Corp v Argos Ltd
[2007] EWCA Civ 741
(19 July 2007) paras 12-16:
‘
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?
For present purposes what matters is
that this basic formulation does not involve expressly what the
inventor actually did or thought.
Nor for that matter what his
opponent did or thought. The inventor may have thought that what he
did was little short of, or actually,
a work of genius - that he was
a latter day Edison. . . . No matter what it was, the test is not
what he did or thought but whether
the step would have been obvious
to the man skilled in the art.
It is quite possible that what the
inventor did was, given his particular circumstances, actually very
clever, yet his patent be
held invalid for obviousness. . . .
The inventor can say what he thought
was clever in his patent, though it is well-settled that he need not
do so – it is not
an objection to validity that the patentee
has failed to distinguish what is new from what is old. But whether
it actually was
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.
And there are more reasons why that
should be so. A patent is a public document. Any member of the public
ought in principle to
be able to make his own assessment of not only
what the monopoly actually is, but whether that monopoly is valid.
Obviousness is
an objective question. . . .’
OBVIOUSNESS:
THE FACTS
[35]
To understand the factual issues surrounding the obviousness issue it
is necessary to begin with the judgment of Southwood
J. He had to
consider whether four patent specifications anticipated claim 1. Two
of these require mention. The first is
US patent 4, 726, 304
(Dreyer)
and the second US patent 4,
691, 645 (Anderson). He found that neither anticipated claim 1. The
reason why Dreyer did not anticipate,
he held, was that integers A(i)
and B(ii) were not disclosed. The reasons why Anderson did not
anticipate are not strictly speaking
relevant but I mention Anderson
because it discloses integer A(i).
[36] Against that
background Southwood J considered inventiveness. In that context
Northpark relied heavily on US Patent No. 5,
161, 472 (Handy). There
was also a reference to a Soilmaster implement but that has since
been lost in the wash and can be discounted.
Northpark’s case
was (both in evidence and in argument) that, except for one integer,
the Handy patent disclosed all the
integers of the claim and that the
skilled addressee would have combined integer A(i) from Anderson with
the Handy implement. Southwood
J rejected the argument.
[37] The SCA, as
mentioned, did not consider novelty and all assume that it thereby
confirmed the finding of Southwood J in that
regard. It differed,
however, from Southwood J’s interpretation of Dreyer by holding
(in the course of its determination
of the state of the art for
purposes of obviousness) that Dreyer did indeed disclose integer
B(ii). The SCA then combined Dreyer
and Anderson to conclude that
claim 1 lacked an inventive step.
[38] Building on that
finding, the respondents’ case is that the claims in their
amended form lack subject matter because
they are obvious through a
mosaicing of Dreyer and Anderson. (On the subject of mosaicing: Simon
Thorley et al
Terrell
on the Law of Patents
16
ed para 7-62.) This presupposes, on the respondents’ argument,
that the added integer (E) ‘
a
second mounting means, which is adjustable for adjustably attaching
the ground engaging means to the tube and closing tool thereby
enabling said ground engaging means to effect said height adjustment’
was disclosed in Dreyer. It is fortunately not necessary
to analyze
Dreyer because respondents’ counsel, during argument, fairly
conceded that this integer was not disclosed by Dreyer.
And it was
not suggested that the integer could be found elsewhere in the prior
art.
[39]
That leaves for consideration the issue of inventiveness: did the
respondents show that the invention claimed was not inventive?
It
should be borne in mind that we are dealing with a mechanical
apparatus and the invention claimed is the combination of a number
of
elements that interact in a particular manner.
In
De Beers
Industrial Diamond Division (Pty) Ltd v Ishizuka
1980 (2) SA 191
(T) at
201C-E, Nicholas J quoted with approval this statement 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?'
[40]
In
Technograph Printed Circuits
at
362, Lord Diplock said this:
‘
Once an
invention has been made it is generally possible to postulate a
combination of steps by which the inventor might have arrived
at the
invention that he claims in his specification if he had started from
something that was already known. But it is only because
the
invention has been made and has proved successful that it is possible
to postulate from what starting point and by what particular
combination of steps the inventor could have arrived at his
invention. It may be that taken in isolation none of the steps which
it is now possible to postulate, if taken in isolation, appears to
call for any inventive ingenuity. It is improbable that this
reconstruction
a
posteriori
represents the mental process by which the inventor in fact arrived
at his invention, but, even if it were, inventive ingenuity
lay in
perceiving that the final result which it was the object of the
inventor to achieve was attainable from the particular starting
point
and in his selection of the particular combination of steps which
would lead to that result.’
[41]
The inventor’s (Mr Ryan’s) evidence that the invention
solved the problems set out under the quoted ‘Background’
was met by what fairly may be called a bald denial by Mr Steyn who
was in any event not an agricultural engineer at the effective
date
of the patent. Mr Ryan, furthermore, testified that the claimed
combination overcame a number of deficiencies of the prior
art. In
particular he mentioned the following: The failure to create a deep
root bed; the failure to create a compacted seed bed
directly above
the root bed; the failure to create the seed bed at a relatively
constant depth; the failure to effect precision
placement of the seed
on the seed bed directly above the root bed; the failure to effect
closing of the seed with soil of a relatively
constant depth; the
failure to compact the soil around the seed; the failure to allow for
independence in the working depth of
the tine and the depth at which
the seed is placed; the failure to allow adjustment of the seeding
depth independently from the
working depth of the tine; having broad
faced working tools which increase drag and caused wide and
unnecessary soil disruption;
and the failure to create a deep root
bed, a seed bed, the precision placement of seed and the closing of
the seed with soil which
is compacted around the seed, at a
relatively constant depth in a single operation.
[42]
This evidence, too, was met with a bald denial from Mr Steyn. Murphy
J disregarded the evidence on two main bases. The first
was ‘the
important point that many of the advantages Ausplow claims the
invention has over the prior art are not referred
to in the
specification’. And the second was that ‘to read these
advantages into the specification would be to introduce
new matter
not in substance disclosed in the specification before amendment’.
I have already pointed out the first point
is legally unsound. As
Lord Hoffmann said in
Conor
Medsystems Inc v Angiotech Pharmaceuticals Inc & Ors
[2008] UKHL 49
para 19:
‘
In my
opinion, however, the invention is the product specified in a claim
and the patentee is entitled to have the question of obviousness
determined by reference to his claim and not to some vague paraphrase
based upon the extent of his disclosure in the description.’
A similar statement
appears in
Unilever v Chefaro
[1994] RPC 567
at 580:
‘
It is the
inventive concept of the claim in question which must be considered,
not some generalised concept to be derived from the
specification as
a whole.’
[43]
The second is based, I fear, on a misconception. The objection to new
matter in the specification arises when an application
for amendment
is made in order to introduce that matter into the specification (s
59(6)). The patentee did not seek to amend the
specification by
introducing this evidence. The provision has nothing to do with
evidence in support of the inventiveness of a
claimed invention. As
was said in
McKelvey
v Deton Engineeering (Pty) Ltd
[1997] ZASCA 57
;
1998
(1) SA 374
(SCA) at 379D-E:
‘
The
Act draws a clear distinction between “matter” and the
claimed invention. “Matter”, in general, refers
to the
disclosure in the body of the specification that
can
support a
claim, whether or not there is a claim based thereon.’
(Compare
eg
Bonzel
v Intervention Ltd
[1991]
RPC 553.)
[44] The leaned
commissioner also relied on part of the reasoning of the SCA when it
had to consider whether the invention claimed
in the unamended claim
1 was inventive. That reasoning cannot simply be made applicable to
another invention claimed in a different
claim. The learned
commissioner, I respectfully suggest, should have decided the case on
the facts before him and not with reference
to the reasoning of the
SCA which was directed at something different.
[45] I therefore conclude
that the respondents have failed to establish that the invention
claimed in the amended claims 1 and 13
did not involve an inventive
step because it was obvious to a person skilled in the art.
DISCRETION
[46] The respondents
asked us, in the event of having found that the amendment will cure
the invalidity, to refuse the application
in the exercise of this
court’s discretion. The first ground advanced was the
patentee’s alleged culpable delay in
applying for the
amendment. The argument was based on the fact that the patentee had
known of the Dreyer prior art and that it
delayed to effect an
amendment until after the adverse judgment of the SCA. There are many
answers to the point but what follows
suffices. Dreyer was quoted as
an anticipation, which it is not. As far as obviousness is concerned,
not even Northpark had thought
that it could be the basis of a
finding of obviousness. I have already indicated that its case before
Southwood J was based on
a mosaic of Handy and Anderson. The SCA,
however, based its judgment on a mosaic of Dreyer and Anderson. How
that should have been
apparent to the patentee before the SCA
judgment has not been explained.
[47] One can dispose on
more or less the same basis of the allegation that the patentee was
guilty of reprehensible conduct because,
being aware of the
invalidity of the patent in the light of Dreyer, it sought to enforce
its patent rights. Once again, the premise
on which the argument is
based has not been established. It is also not possible to dispose
glibly of the fact that Southwood J
had held in a fully reasoned
judgment that the patent was good. If he thought so after a lengthy
trial it is difficult to understand
why the patentee should have
thought differently, especially since it took legal advice before it
commenced litigation.
[48] The respondents did
not ask us to consider the grant of the amendment subject to
conditions. The reason may be because Northpark
is a property owning
company and the third and fourth respondents allege that they do not
infringe the amended claims. It would,
accordingly, be wrong to
impose conditions of which the patentee had not been forewarned.
CONCLUSION
[49] This means that the
appeal must be upheld to the extent that the order of the court below
dismissed the application to amend
the specification and finally
revoked the patent. The orders not appealed against stand. Because of
the partial success of the
respective parties in the court below the
appropriate order would be that the parties pay their own costs in
that court. The appellant
is entitled to its cost of appeal including
the costs of two counsel.
ORDER
A. The appeal is upheld
with costs (jointly and severally against the first, third and fourth
respondents), including the costs
of two counsel.
B. Paragraphs 3, 4 and 5
of the order of the Court of the Commissioner of Patents are set
aside and replaced with the following:
‘
3
The application to amend the specification of Patent ZA 95/0812 is
granted.
4
The
provisional order of revocation lapses.
5
The parties are to pay their own costs.’
_____________________
L T
C Harms
Acting
President
APPEARANCES
For
Appellant: P Ginsburg SC (with him D R Harms)
Instructed
by:
Adams
& Adams, Pretoria
Lovius
Block Attorneys, Bloemfontein
For
Respondent: C J vd Westhuizen SC (with him R B Engela)
DR
Gerntholtz Inc, Pretoria
McIntyre
& Van der Post, Bloemfontein
Second
Respondent:
The
Registrar of the Court of the Commissioner of Patents Pretoria
1
Ausplow
(Pty) Ltd v Northpark Trading 3 (Pty) Ltd & others (95/0812)
[2010] ZACCP 5 (30 April 2010)
.
2
Ausplow
Pty Ltd v Northpark Trading 3 (Pty) Ltd & 0thers (95/0812)
[2010] ZAGPPHC 135 (5 October 2010)
.
3
The
second respondent is the Registrar of Patents who was cited for
formal reasons and who did not take part in the proceedings.
The
third respondent is Marais Engineering (Pty) Ltd, and the fourth
respondent is Mr Marais Steyn, the sole shareholder of the
first and
third respondents. The third and fourth respondents were not party
to the initial litigation. How they became involved
in the amendment
proceedings is no longer of consequence but appears from
Ausplow
(Pty) Ltd v Northpark Trading 3 (Pty) Ltd
2009 BIP 37 (C of P).
4
Ausplow
(Pty) Ltd v Northpark Trading 3 (Pty) Ltd
2007 BIP 1 (C of P).
5
Northpark
Trading 3 (Pty) Ltd v Ausplow (Pty) Ltd (278/07) [2008] ZASCA 46;
2008 BIP 14 (SCA).
6
Para
18.
7
Section
68:
‘
Relief
for infringement of partially valid specification
—
Where
in any proceedings for infringement of a patent, the commissioner
finds that any claim in the complete specification in
respect of
which infringement is alleged, is valid, but that any other claim
therein is invalid, the following provisions shall,
notwithstanding
anything contained in section
66 (5), apply, namely—
(
a
) If a
counterclaim for the revocation of the patent has been made in the
proceedings on the ground of the invalidity of any claim
in the
specification, the commissioner may postpone the operation of any
order issued thereon for such time as may be required
to enable the
patentee to effect any amendment of the specification pursuant to
the conditions imposed by the commissioner, who
may attach such
other condition to any order to be issued on the counterclaim as he
may deem fit; and
(
b
)
when the specification has been amended in terms of
paragraph
(a)
,
the commissioner may, subject to such order as to costs as he may
issue and as to the date from which damages shall be calculated,
grant relief in respect of any claim which had, before the
amendment, been found to be valid and infringed, and in exercising
his discretion he may take into consideration the conduct of the
patentee in inserting in the specification those claims which
had
been found, before amendment, to be invalid or permitting such
claims to remain there.’
8
Section
51:
‘
(6) No
amendment of a complete specification which becomes open to public
inspection after the publication of the acceptance
of the
specification in terms of section
42, whether before or after it so becomes open to public
inspection, shall be allowed
if—
(
a
) the effect of
the amendment would be to introduce new matter or matter not in
substance disclosed in the specification before
amendment; or
(
b
) the
specification as amended would include any claim not fairly based on
matter disclosed in the specification before amendment.
(7) No
amendment of a complete specification which has become open to
public inspection after the publication of the
acceptance of the
specification in terms of section
42 shall be allowed if the specification as amended would
include any claim
not wholly within the scope of a claim included in
the specification before amendment.’
9
The
phrase ‘to dislodge the soil’ was omitted by mistake
from the draft contained in the notice of motion. Since it
had
always been part of the claim and the patentee did not give notice
of any intention to delete the phrase, the omission is
immaterial.
10
Boards
of Appeal of the European Patent Office Case no T 0190/99 - 3.2.4.
The statement that a patent ‘must be read by a
mind willing to
understand, not by a mind desirous of misunderstanding’ comes
from
Lister v Norton Brothers and Co
(1886) 3 RPC 199
(Ch D).