Brief Summary

Intellectual Property — Patent Infringement — Interpretation of claims — Appellant, Orica Mining Services, sought an interdict against Elbroc Mining Products for alleged infringement of South African Patent No. 2001/10382 concerning a portable self-supporting drill rig. The central issue was the interpretation of the term "between" in the patent claims, which Elbroc argued meant "linearly between," thus claiming no infringement as their rig's carriage was offset. The court a quo ruled in favor of Elbroc, finding no infringement based on this interpretation. On appeal, the SCA held that the interpretation of "between" should consider the context of the patent specification, concluding that Elbroc's rig did infringe the patent, and upheld Orica's appeal with costs.

Comprehensive Summary

Summary of Judgment

1. Introduction

The proceedings were an appeal to the Supreme Court of Appeal against a decision of the Court of the Commissioner of Patents. The appeal concerned an action for patent infringement under the Patents Act 57 of 1978, in which the patentee sought an interdict and related relief to restrain alleged infringement.

The appellant was Orica Mining Services South Africa (Pty) Ltd (“Orica”), the proprietor of South African Patent No 2001/10382, entitled “Portable Drilling Apparatus”. The respondent was Elbroc Mining Products (Pty) Ltd (“Elbroc”), a competing supplier of mining equipment.

In the court of first instance (Mabuse J, sitting as Commissioner of Patents), Orica’s infringement claim was dismissed with costs. Elbroc had also delivered a counterclaim for revocation of the patent on the basis of obviousness, but the parties agreed to a separation of issues, and the revocation counterclaim was postponed sine die. As a result, only the infringement dispute, and more particularly the proper construction of the word “between” in the claims, was decided.

The general subject-matter of the dispute was the scope of protection conferred by patent claims, and whether Elbroc’s drill rig fell within the claims of Orica’s patent, given a disagreement about whether the drill carriage had to be “linearly between” two telescopic props or merely “between” them in a broader spatial sense.

2. Material Facts

Orica was granted the patent on 19 December 2001 under the Patents Act 57 of 1978. The invention concerns a portable self-supporting drill rig (a roof bolter rig) used in underground mining to drill holes in a mine’s hanging wall for the placement of roof bolts or other stabilising attachments. The rig is designed to enable drilling in confined spaces while reducing the need for manual holding and positioning, and it improves safety by using extendable props to support the hanging wall during drilling.

The patent (in its preferred embodiment) uses two extendable telescopic props with a carriage that supports a drill, and the carriage is described in the relevant claims as being “between” the props. The props are fluid-operated and are structurally described as including cylinders, pistons, bases, and bracing features.

It was common cause that Elbroc sold roof bolter rigs in South Africa that performed the same function as Orica’s roof bolter rig. Orica alleged that Elbroc’s product infringed claims 1, 16, 17 and 18 of the patent.

The principal disputed fact (in the sense relevant to infringement) did not concern whether Elbroc’s rig performed roof bolting or contained many of the claimed features. The dispute turned on whether one claimed integer—namely that the drill carriage is located “between” a pair of telescopic props—was present in Elbroc’s rig. Elbroc accepted that the other integers of the asserted claims were present, but denied infringement on the basis that its drill carriage was offset relative to the notional line between the two props.

In the court a quo, the Commissioner adopted a dictionary-derived interpretation of “between” as meaning “linearly between”, found that Elbroc’s carriage was not positioned in that linear space, and therefore concluded that there was no infringement. The Commissioner also held that Orica’s broader interpretation would amount to an impermissible extension of the claim language.

On appeal, Orica maintained that a proper construction required only that the carriage be located in the space between the props, even if not located in the same linear plane as the props. Orica also relied on the context of the specification, including language indicating that the drill need not be located linearly between the props but may be generally between them, particularly where additional props are used.

3. Legal Issues

The central legal questions were, first, how the word “between” in the relevant patent claims should be construed when the claims are read in context of the specification as a whole; and secondly, applying that construction, whether Elbroc’s drill rig incorporated all the integers of the asserted claims so as to amount to infringement within the meaning of section 45(1) of the Patents Act 57 of 1978.

The dispute was primarily one of law, namely the interpretation of the patent claims, but it also involved the application of law to fact, in that the construed meaning of “between” had to be applied to the configuration of Elbroc’s drill rig to determine whether the integer was present.

A further dimension of the interpretive question was whether the court should adopt a narrowly literal approach (focusing on a selected dictionary meaning) or a contextual and purposive approach to construction in determining whether “linearly between” was an essential requirement of the claim.

4. Court’s Reasoning

The Supreme Court of Appeal approached the matter from the established premise that the extent of patent protection is determined by the wording of the claims, construed as part of the specification read as a whole. The court accepted that section 45(1) confers protection against unauthorised making, using, disposing of, or offering to dispose of the invention, but emphasised that the invention must be identified through proper interpretation of the claims.

Relying on the established South African approach to patent interpretation, the court reiterated that the claims define the monopoly, but they are not construed in isolation. The court referred to authority emphasising that the claims “derive their colour” from the specification and that courts should guard against an overly “textual” approach that may allow a party to take the substance (or “pith and marrow”) of an invention while evading infringement by departing in an inessential respect.

Against that framework, the court rejected Elbroc’s submission that the body of the specification may be consulted only where the claim language is ambiguous, and endorsed the view that even apparently plain words must be understood as a reasonable skilled addressee would understand them in context. The court considered that dictionary meanings are only a guide and are not decisive, because the controlling enquiry is what meaning is applicable in the context of the particular document.

In assessing Elbroc’s reliance on dictionary definitions, the court noted that Elbroc had advanced multiple possible definitions of “between,” including one that required collinearity. The court found no justification for privileging the “linearly between” meaning and considered a relational meaning—“with something on each side”—to be more sensible in context, because it does not depend on the geometry of the objects in the restricted manner implied by collinearity.

Contextual indicators in the specification were central to the court’s analysis. The court highlighted that the detailed description expressly stated that the drill need not be located linearly between the pair of props, but may be generally between them, and that this would be more likely where additional props are used. This statement was treated as an explicit disavowal of the notion that linear positioning is an essential limitation of the claimed invention. The court reasoned that if more than two props are used and are not arranged in a straight line, a carriage can still be “between” the props without being linearly between them, which undermines a rigid collinearity requirement.

The court also considered the expert evidence. Importantly, Elbroc’s own expert understood “between” to allow for the carriage to be offset or off-centre relative to the notional line between the props. Although both experts viewed a linearly centred carriage as an optimal solution, the court treated “optimal” as not synonymous with “essential,” and did not accept that the claims should be confined to only the optimal geometric arrangement.

The court then addressed purposive interpretation explicitly, referring to the approach associated with Catnic Components Limited and another v Hill & Smith Limited. It drew parallels between the present case and Catnic in that the alleged infringer had taken all but one feature and the variation had no demonstrated material effect on the way the invention worked. Applying this approach, the court considered whether strict compliance with a “linearly between” requirement would be understood by the skilled addressee as essential to the invention’s operation. It found no indication in claim 1 that Orica intended linear positioning to be essential, nor that the word “between” was used as a word of precise meaning that excluded offset arrangements.

In dealing with Elbroc’s reliance on Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and others; Hoechst Marion Roussel Ltd and others v Kirin-Amgen and others, the court held that the reliance was misplaced. It read Kirin-Amgen as consistent with purposive interpretation and as rejecting an artificial exercise that treats claim words as having meanings “in themselves” divorced from context and audience. The court therefore treated purposive construction as part of the accepted interpretive method, not as an impermissible extension of claim language.

Finally, the court connected the interpretation to the function and advantage of the invention as described in the specification: the telescopic props provide support to the hanging roof and to the drill assembly located “between” them, enabling remote operation and enhanced safety. The court considered that this was precisely what Elbroc’s rig sought to achieve, and that the offset arrangement did not take the rig outside the monopoly as properly construed. On this basis, the court concluded that construing “between” as “linearly between” was unjustified, and that Elbroc’s rig infringed the patent.

5. Outcome and Relief

The Supreme Court of Appeal upheld the appeal and set aside the Commissioner’s order dismissing the infringement action.

It substituted the order with an interdict in terms of which Elbroc was interdicted from infringing South African Patent No 2001/10382 by selling or offering for sale in South Africa Elbroc’s drill rig.

Elbroc was ordered to pay Orica’s costs, including the costs of two counsel, both in the appeal and in the substituted order relating to the court a quo.

Cases Cited

Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A).

Harrison v Anderson Foundry Company (1876) 1 AC 574 (HL).

Multotec Manufacturing (Pty) Ltd v Screenex Wire Weaving Manufacturers (Pty) Ltd 1983 (1) SA 709 (A).

Electrical and Musical Industries v Lissen Ltd (1938) 56 RPC 23 (UK).

Marine 3 Technologies Holdings (Pty) Ltd v Afrigroup Investments (Pty) Ltd and another [2014] ZASCA 208; 2015 (2) SA 387 (SCA).

Monsanto Co v MDB Animal Health (Pty) Ltd (formerly MD Biologics CC) 2001 (2) SA 887 (SCA).

De Beers Industrial Diamond Division (Pty) Ltd v Ishizuka 1980 (2) SA 191 (T).

Selas Corporation of America v Electric Furnace Co 1983 (1) SA 1043 (A).

Aktiebolaget Hässle and another v Triomed (Pty) Ltd 2003 (1) SA 155 (SCA).

Catnic Components Limited and another v Hill & Smith Limited [1982] RPC 183.

Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and others; Hoechst Marion Roussel Ltd and others v Kirin-Amgen and others [2005] 1 All ER 667.

Legislation Cited

Patents Act 57 of 1978, section 45(1).

Patents Act 9 of 1916, section 16(3).

Patents Act 9 of 1916, section 27(1)(g).

Rules of Court Cited

No rules of court were cited in the judgment.

Held

The court held that the scope of protection conferred by the patent had to be determined by construing the claims in context, and that interpreting the word “between” in the claims to mean “linearly between” was unjustified when read against the specification and the claims as a whole.

On the proper construction, the claims required that the drill carriage be between the props in a spatial and functional sense, and did not require strict collinearity. The offset positioning of Elbroc’s carriage did not take its rig outside the patent’s monopoly as claimed. Consequently, Elbroc’s drill rig infringed South African Patent No 2001/10382, and Orica was entitled to an interdict and costs.

LEGAL PRINCIPLES

Patent infringement is determined by first construing the claims, because the claims define and limit the monopoly for which protection is sought, and the patentee obtains no monopoly for subject-matter not claimed.

Although the language of the claims is decisive in defining the prohibited field, the claims are construed as part of the specification read as a whole, and the meaning of claim language may be informed by the context provided in the body of the specification. Dictionary meanings are a guide but are not determinative; the controlling enquiry is the meaning that the notional skilled addressee would attribute to the words in their context.

Courts should avoid an overly literal or “textual” approach that would permit appropriation of the substance of the invention through departure from an inessential feature. A purposive interpretation may treat strict compliance with particular words as non-essential where the skilled addressee would understand that a variant does not materially affect the way the invention works, and where the claim language in context does not indicate an intention to insist on precision in that respect.

Orica Mining Services SA (Pty) Ltd v Elbroc Mining Products (Pty) Ltd (233/2016) [2017] ZASCA 48; [2017] 2 All SA 796 (SCA) (31 March 2017)