Northpark Trading 3 (Pty) Ltd v Ausplow (Pty) Ltd (278/07) [2008] ZASCA 46; 2008 BIP 14 (SCA) (31 March 2008)

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[2008] ZASCA 46
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Northpark Trading 3 (Pty) Ltd v Ausplow (Pty) Ltd (278/07) [2008] ZASCA 46; 2008 BIP 14 (SCA) (31 March 2008)

THE
SUPREME COURT OF APPEAL
OF
SOUTH AFRICA
Not Reportable
CASE NO: 278/07
In the matter between :
NORTHPARK TRADING 3 (PTY) LTD
...
Appellant
and
AUSPLOW (PTY) LTD
...
Respondent
___________________________________________________________________
Before: STREICHER, NUGENT,
HEHER JJA, HURT & SNYDERS AJJA
Heard: 14 MARCH 2008
Delivered: 31 MARCH 2008
Summary: Patent –
revocation – not involving an inventive step
Neutral citation: Northpark
Trading v Ausplow (278/07)
[2008] ZASCA 46
(31 March 2008)
________________________________________________________________________
J U D G M E N T
________________________________________________________________________
NUGENT JA
NUGENT JA
:
[1] This is an appeal from the Court of the Commissioner
of Patents (Southwood J) where the appellant was the defendant in an
action
brought by the respondent for patent infringement. I will
refer to the parties as they were referred to in the court below. The
defendant
was alleged to have infringed South African Patent No.
95/0812 registered in the name of the plaintiff under the
Patents Act
57 of 1978
, with a priority date 3 February 1994. The defendant
denied infringement, denied the validity of the patent, and
counterclaimed for
its revocation on the grounds that the invention
claimed was not new, did not involve an inventive step, and was
unclear. The court
below dismissed the defences and the counterclaim
hence the present appeal, which is before us with the leave of that
court.
[2] It is convenient to deal at the outset with the
validity of the patent because in my view that is decisive of this
appeal. The
dispute in that regard falls within a decidedly narrow
compass. I think that the point of dispute can most conveniently be
identified
by briefly summarising the description of the invention as
it appears in the specification before turning to the claims.
[3] The invention is entitled ‘Improvements in or
Relating to Seeding Machinery.’ A brief description of the
machinery of the
prior art will assist to understand the claims. 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 fertiliser 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
fertiliser (if fertiliser
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.
[4] Under the heading ‘Background to the Invention’
the specification describes a problem that may be encountered with
seeding
machinery of that kind:
‘
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 specification records that the object of the
invention is
‘
to overcome or substantially ameliorate the
above disadvantages.’
[5] While that is said to be the object of the invention
the claims are not confined to a means of overcoming the difficulty
described
in the specification. Claim 1 reads as follows:
‘
A seeding assembly to be used with a plough
frame supporting at least one 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 to
partly close the slot and provide a seed bed onto which seed leaving
said lower extremity is delivered;
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
ground engaging means operatively associated with the tube and
closing tool to engage the soil layer to cause said height
adjustment.’
[6] A patent may be granted for an invention only if –
amongst other things – the invention is new and it involves an
inventive
step.
1
A patent that has been granted for an invention that
does not meet those criteria may be revoked.
2
An invention is not new if it forms part of the state of
the art immediately before the priority date of a claim to the
invention.
The state of the art includes all matter that has been
made available to the public, whether in the Republic or elsewhere,
by written
or oral description.
3
[7] In support of its claim of want of novelty the
defendant relied on three patents granted in the United States on
various dates
that precede the priority date of the patent that is
now in issue – the Halford patent, the Anderson patent and the
Dreyer patent
– and on one South African patent. Reliance upon the
South African patent was abandoned in the heads of argument. Applying
the
well-established approach to this question as it was explained by
this court in
Gentiruco
4
and later summarised in
Netlon
5
the court below held that none of the earlier patents
described all the integers of the patent that is now in issue. For
reasons that
will become apparent it is necessary only to consider
the Dreyer patent (US Patent No. 4,726,304).
[8] It is not necessary in this case to divide claim 1
of the patent in issue into its constituent elements because there is
only
one element that is not described in Dreyer. The Dreyer
invention is described in summarised form in the specification as
follows:
‘
The object
of the
present invention is to attain a reliably separated deposit of two
materials, such as seed and fertilizer, even in heavy soils
and
especially in zero tillage.
This object is attained in accordance with the invention in that an
expansion structure that extends down into the furrow is positioned
in the vicinity of the rear outlet of each sowing share, in that the
expansion structure is at least somewhat wider than the ripping
structure, and in that the bottom end of the expansion structure is
higher than the bottom of the point of the ripping structure.
The expansion structure on the sowing share between the forward and
rear outlet ensures that the material deposited in the furrow
through
the first outlet will be covered with soil in such a way that the
fertilizer and seed will be separated by a layer of soil
even when
the soil is very heavy or a lot of soil is thrown up. The expansion
structure always pushes at least a little soil ahead,
forcing it over
the material deposited in the furrow from the first outlet. The
material coming from the rear outlet on the sowing
share will then
always fall on top of the soil covering the first material.’
The Dreyer invention might also have an impact structure
mounted on the rear of the expansion structure, which ensures that
the second
material (ordinarily the seed) is spread in a ribbon, but
that is an optional feature that does not limit the description.
[9] Dreyer discloses all but one of the elements of the
invention that is now in issue. There was some suggestion in argument
that
Dreyer does not disclose the ‘closing tool’ of the present
invention (the tool of the prior art that functions to partially fill
the slot) but I think the apparent distinction is one of nomenclature
only. What Dreyer describes as the ‘expansion structure’
in the
summary I have given is in all respects the equivalent of the
‘closing tool’ of the present invention. It was also suggested
that the apparatus of the present invention has the seed being
deposited in a line while Dreyer has it being deposited in a ribbon
but I have already pointed out that that feature of the Dreyer
invention is optional.
[10] But there is this distinction: the invention that
is now in issue has the seeding tube extending downwardly ‘into’
the slot
that is formed by the tine, which is not described by
Dreyer. It was submitted on behalf of the appellant that the seed
outlet of
the Dreyer patent is capable of projecting into the slot
but that is not correct. It was accepted on behalf of the appellant
that
all the integers of the present invention – including that
integer – were intended by the inventor to be essential to the
claim.
It follows that to the extent that the seed-tube of the
invention projects into the slot the invention is not described by
Dreyer.
(All its integers are also not described by the other
documents relied upon by the appellant but in view of the conclusion
to which
I have come it is not necessary to compare those
descriptions.)
[11] For a patent to be valid the claimed invention must
not only be new but must also 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 the invention, part of the
state of the art. It was not disputed that the state of the art
immediately before the priority date for this purpose includes the
Dreyer and the Anderson patents.
[12] In
Ensign-Bickford
6
Plewman JA restated the enquiry in this regard in four
parts:
‘
(1) What is the inventive step said to be
involved in the patent in suit?
What was, at the priority date, the state of the art (as statutorily
defined) relevant to that step?
In what respect does the step go beyond, or differ from, that state
of the art?
Having regard to such development or difference, would the taking of
the step be obvious to the skilled man?”
[13] Courts in this country and abroad have warned on
numerous occasions against the danger posed by hindsight in assessing
whether
a step is inventive. As pointed out in
Windsurfing
International Inc v Tabur Marine (Great Britain Ltd
,
7
cited with approval in
Ensign-Bickford
:
8
‘
What with hindsight, seems plain and obvious,
often was not so seen at the time.’
The extent to which expert evidence is admissible, and
the role that it might play in the assessment of whether the
invention involves
an inventive step, is not necessary to revisit in
this case.
9
Though expert evidence might be necessary in some cases
– at least to educate a court in the technology involved – that
will not
always be so. The proper enquiry has been formulated in
various ways in the cases but I do not think it is necessary to
repeat them.
As pointed out by
Burrell
,
10
‘
the word “obvious” is a much-used word and
… there really is no need to go beyond its primary dictionary
meaning of “very
plain”’.
[14] Whether the step would be obvious to a person
skilled in the art falls to be judged with regard to material that
formed the state
of the art at the material time, which need not be
described in a single document. It is permissible in appropriate
cases to draw
from more than one document to determine what would be
obvious to a person skilled in the art.
11
[15] I think it is fair to infer from the background to
and object of the invention as it is recorded in the specification
that the
inventive step that the inventor considered himself to be
taking lay in linking the seeding assembly to the tine in such a way
that
the seeding assembly is capable of moving in a vertical plane
relative to the tine and causing the seeding assembly to move in that
plane so as to follow the profile of the soil. Implicitly, this would
solve the difficulty that the inventor said (in the portion
of the
specification that I have referred to) was the object of the
invention.
[16] The specification is silent as to any benefits that
are to be achieved by extending the outlet of the seeding tube into
the slot
and that integer is also immaterial to achieving the
proclaimed object of the invention. But in argument it was submitted
that the
inventiveness of projecting the seed tube into the slot lies
in the propensity this gives to the seed tube to avoid seed being
displaced
by wind. If that was why the inventor considered the
projection of the tube into the slot to be an inventive step it is
remarkable
that no reference was made to it when describing the
background to and the object of the invention. It seems to me that
reliance
upon that integer as constituting an inventive step is
merely an opportunistic exploitation of the absence of that integer
from the
description in Dreyer.
[17] I do not think that integer can be said to
constitute a step forward upon the state of the art and least of all
a step that is
inventive. I think there can be little doubt that a
person skilled in the art, faced with the problem of wishing to
ensure accuracy
of the placement of the seed (which was the only
reason advanced in argument for why the step is inventive) would
extend the outlet
of the tube into the slot so as to be as close as
possible to the bed upon which it is to be placed. To the extent that
he or she
might not already know that, it would be apparent from the
description in Anderson in which that is disclosed. In my view the
invention
in the present case does not involve an inventive step.
[18] We were asked by counsel for the respondent, 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.
[19] The appeal is upheld with costs. The orders of the
court below are set aside and the following orders are substituted:
‘
1. The plaintiff’s action is
dismissed with costs.
2. The defendant’s counterclaim for the revocation of
South African Patent No. 95/0812 is granted and, subject to the
orders below,
the patent is revoked.
3. The order in paragraph (2) above 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.
4. The plaintiff is ordered to pay the defendant’s
costs in respect of the counterclaim.’
___________________
R.W. NUGENT
JUDGE OF APPEAL
CONCUR
:
STREICHER JA)
HEHER JA)
HURT AJA)
SNYDERS AJA)
1
Section
25(1)
of the Act.
2
Section
61(1)(c).
3
">
3
Section
25(6).
4
">
4
Gentiruco
A.G. v Firestone SA (Pty) Ltd
1972 (1) SA 589
(A).
5
Netlon
Ltd v Pacnet (Pty) Ltd
1977 (3) SA 840
(A) at 861F-862B.
6
Ensign-Bickford
(SA)(Pty) Ltd v AECI Explosives and Chemicals Ltd
1999 (1) SA 70
(SCA) at 80I-J.
7
[1985]
RPC 59
at 72.
8
At
81E-H.
9
Cf.
T D Burrell
Burrell’s South African Patent and Design Law
3ed para 4.13.3.
10
Cited
above.
11
Burrell,
above, para 4.11.4, and cases there cited.