About SAFLII
Databases
Search
Terms of Use
RSS Feeds
South Africa: North Gauteng High Court, Pretoria
SAFLII
>>
Databases
>>
South Africa: North Gauteng High Court, Pretoria
>>
2012
>>
[2012] ZAGPPHC 207
|
|
African Explosives Ltd v Sasol Dyno Nobel (Pty) Ltd (1991/2194) [2012] ZAGPPHC 207; 2012 BIP 55 (CP) (13 September 2012)
NOT
REPORTABLE
IN
THE NORTH GAUTENG HIGH COURT, PRETORIA
(REPUBLIC
OF SOUTH AFRICA)
Case
Number: 1991/2194
DATE:13/09/2012
In
the matter between:
AFRICAN
EXPLOSIVES
LTD
...................................................................
APPLICANT
and
SASOL
DYNO NOBEL (PTY)
LTD
…........................................................
RESPONDENT
JUDGMENT
Delivered
on: 13 September 2012
POTTERILL
J,
1.
The Applicant is in terms of
section 51(10)
of the
Patents Act, No 57
of 1978
("the Act") applying to set aside two amendments to
the claims of South African patent 1991/2194("the patent").
The Registrar of Patents (the Registrar) granted the first amendment
on 14 August 1992 and the second amendment on 25 May 2004.
The
applicant contended that the two amendments fell foul of
sections
51(6)
and
51
(7) of the Act. The respondent is the patentee of the
patent.
2.The
applicant brought this application because the respondent instituted
action against the applicant based on the infringement
of the patent.
The applicant filed a plea and counterclaim wherein inter alia the
impermissible amendments were relied upon as
defence and a basis for
a counterclaim. The respondent filed an exception against the plea
and counterclaim in essence objecting
to reliance on the
"inadmissible" amendments as a basis. The respondent was
successful in that the Court upheld the exception.
The applicant then
resorted to this application.
3.
The patent is for an invention titled "LOW-ENERGY BLASTING
INITIATION SYSTEM AND SURFACE CONNECTION THEREOF." This
patent
was granted on 29 January 1992 with the specification as originally
filed. The patent in my understanding is for apparatus
for use in
blasting operations. The apparatus is non-electrical. It is a
low-energy blasting initiation system having a surface
connection and
time-controlled initiation for detonation of a plurality of blasting
charges. A detonator system including shock
tubes are part of the
apparatus.
4.
The respondent applied to amend a complete specification after
advertisement of acceptance:
"to
correct certain discrepancies in the terminology of claim 1, 4, 5 and
6 " and "to amend the claims to a scope
similar to those
presently being executed in a corresponding USA application..
'[Annexure 1 to the applicant's founding affidavit.]
Pursuant
to the first amendment application being advertised the applicant (or
its predecessor in title) applied to the Registrar
for an extension
of time in which to oppose this amendment application. The applicant
however took no further steps and the amendment
was allowed by the
Registrar on 9 March 1993. The applicant thus knew of this amendment
for approximately 20 years. The second
amendment was advertised with
no objection raised and was granted by the Registrar. I accept the
version of the respondent that
the applicant, or its predecessor in
title, was aware of the second amendment at the latest on 26 October
2006 and not on 7 December
2010 as averred by the applicant.
5.1
The applicant applied for the first amendment to be set aside because
it believed the amendment contravened
sections 51(6)
but specifically
section 51(7)
of the Act[par 35 of applicant's heads] which reads as
follows: "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."
5.2
The applicant is relying on the amendments of claims 1 and dependant
claims 4, 5 and 6 as a claim not wholly within the scope
of the claim
included in the specifications before the amendments. Claim one
unamended read as follows:
"
A low energy blasting initiation system surface connection for
initiation of non-directional signal transmission in at least
one
transmission tube having an outside diameter, by a low energy
detonator comprising: a housing having a channel formed therein
for
receiving the detonator, said housing being of a substantial
thickness and size for ease of handling; a resiliently deformable
segment fixed at one end to said housing, at least a portion of said
segment being of a reduced size and material thickness than
said
housing;
a
tube engaging and gripping member fixed to the opposite end of said
segment to form a slot between said housing and said member
having a
width slightly smaller than the transmission tube outside diameter,
said segment deforming in response to force exerted
on said member
for positioning the transmission tube in said slot; and positioning
means on said housing for positioning the detonator
within said
channel end with an explosive end of the detonator in juxtaposed
energy communicating relationship with the transmission
tube, whereby
activation of the detonator explosive end initiates non-directional
signal transmission within the transmission tube.
Amended
it read as follows:
"A
low energy blasting initiation system surface connector block for
initiation by a low-energy detonator of non-directional
signal
transmission in one or more transmission tubes having a transmission
tube outside diameter comprising;" a housing
having a channel
formed therein for receiving the detonator, said housing being of a
substantial thickness and size for ease of
handling; a resiliently
deformable segment fixed at one end to said housing, at least a
portion
of said segment being of a reduced size and material thickness
relative to [than] said housing; a tube engaging and gripping
member
fixed to the opposite end of said segment to form a slot between said
housing and said member having a width slightly smaller
than the
transmission tube outside diameter, said segment deforming in
response to force exerted on said member for positioning
the
transmission tube in said slot; and positioning means on said housing
for positioning the detonator within said channel end
with an
explosive end of the detonator in juxtaposed energy communicating
relationship with the one or more transmission tubes],
whereby
activation of the detonator explosive end initiates non-directional
signal transmission within the transmission tube."
[The words in
bold are the additions and the words in brackets are the words left
out.] The specific complaint of the applicant
is the substitution of
the word "surface connection" to "surface connector
block'.
5.3
The founding affidavit on behalf of the applicant was made by the
applicant's
patent attorney. He stated that "connection"
means the "state of being connected" but a claim directed
to a
"block" is restricted to a block and did not extend to
components which are connected to the block or which were connected
to one another by means of the block. He submitted that:
"27.1
a claim which is directed to a "connector block" is limited
to attributes of the connector block alone, and
does not include at
least one transmission tube nor a detonator: and
27.2
a "connection" includes a connector block and at least one
signal tube and a detonator" [applicant's founding
affidavit]
He
thus submitted that the amendment was broader in scope than the
unamended claim.
5.4
On behalf of the applicant it was argued that the "dictionary
meaning of the noun "connection" includes "the
state
of being connected; a link; a point or position at which two or more
things are joined: coupling, joint, juncture, seam."
In
contrast thereto "the dictionary meaning of the noun "connector
block" means a "piece of material with flat
surfaces on
each side"; a "device for holding two parts of an
electrical conductor in contact (electronics)"; and
a device for
connecting two cables without using plugs".
In
short thus it was argued that a "connection" describes only
a junction point or a connecting link between two or more
objects
comprising of 4 elements. In contrast thereto a "connector
block" is a device comprising of the four elements.
The Court's
attention was drawn to the specifications whereupon it was argued
that a clear distinction could at all times be drawn
between "a
connector block" and "connection point "and the two
phrases were not used erratically The amendment
from a particular
kind of connection limiting it to a particular kind of a connector
for making a connection extended the scope
of the claim and was
impermissible in terms of
section 51
(7).
5.5
On behalf of the respondent Mr van Dijke attested to the answering
affidavit. He was the Manager-Technical services, Explosives
Business, of Sasol Nitro, a division of Sasol Chemical Industries
Ltd. It was not disputed that he was an expert pertaining to
the
Patent before the court.
He
stated that the word "connection "has two meanings, "being
connected" and "a connecting part".
The word
"connection" in the first line of claim 1 in the
specification as originally filed has the aforementioned second
meaning of "a connecting part". I say this for the
following reasons:
(i)
The integers (i) to (v) of claim 1 as originally filed as set out
above refer directly to features of the connection in the
second
sense of "a connecting part" or connector block only.
(ii)
The elements of a "connection" in the first sense of "being
connected or related" are only referred to
indirectly or
functionally, by the language:
a)
for initiation of non-directional signal transmission in at least one
transmission tube having an outside diameter by a low energy
detonator" in interger (i);'\Par 25 (e) of the answering
affidavit]
He
maintained the same argument pertaining to integers (ii)-(v).
The
original claims 2 and 3 refer not to'a connection" but to "the
connector block of claim 1". Claims 4, 5 and 6
again refer to
"The connection of claim 1..."
and
claim 9 to "connection." He submitted that these
discrepancies in the claims were amended to achieve improved
consistency
in the terminology used. This was achieved by replacing
the word "connection" with "connection block" as
originally
used in claims 2 and 3. He submitted that a "connection"
included, but is wider in scope than a "connector block".
He concluded thus that after the amendment claim 1 was fully within
the scope of claim 1 of the specification as originally filed,
albeit
it narrower in scope.
5.6
It was argued on behalf of the respondent that on a proper reading of
the specification as originally filed "connection"
did not
mean "the state of being connected" as argued by the
applicant. The "connection" used in line 1 of
claim 1 has
the meaning of a connecting part. The word "connection" has
two meanings, "a connecting part" or
"being connected
or related". In the specification "connection" is used
in these two senses and from the context
one can readily ascertain in
which of the two senses it is meant. In claim one connection meant a
connecting part. The scope is
not widened, but is in fact narrowed
down to a specific connecting part.
6.
Both counsel for the applicant and respondent relied on the ratio of
Bristol-Myers Co v Beecham Group Ltd 1981 (1) SATPD 399
as to what is
meant by the expression the" scope of the claim." On p406 A
Goldstone J found "The most relevant definition
of the word
"scope" in the Shorter Oxford English Dictionary is:
'The
sphere or area over which any activity operates or is effective; the
field covered by a branch of knowledge, an enquiry, concept,
etc."
I
find this to be a good verbalization of what one understands "scope"
to entail.
In
comparing and interpreting the amended and unamended claim an
objective test is to be applied. The words used must be interpreted
in their ordinary grammatically sense;[Gentiruco AG v Firestone SA
(Pty) (Ltd) 1972(1 )SA 589 (A) at 615C-D.] Where the meaning
of the
claim is clear and unambiguous it is decisive and cannot be
restricted or extended by anything else stated in the body or
title
of the specification [Gentiruco supra at 615E-F ] The Court must
construe the patent in its amended and unamended form and
not the
expert or skilled person in the art- [B-M Group Ltd v Beecham Group
Ltd 1980(4) SA 526 (A)].
7.
In comparing the amended and unamended claim 1 I cannot find that the
scope of the specification as amended did include any claim
not
wholly within the scope of the claim included in the specification
before amendment. "Connection" in claim 1 meant
a
connecting part because if read in context it comprised or consisted
of certain features. These features are particular to an
object and
not to "a state of connection". The connection thus was a
connecting part because the integers set out in
claim 1 refer to the
features of the connection as a device. It cannot on the plain
grammatical reading be interpreted as state
of connection. By
amending the word "connection" to the word "connector
block" the connection identifiable
as a connecting part has a
name i.e. a "connector block." This name is no surprise
because claims 2 and 3 already refer
to a "connector block."
Claims 4, 5 and 6 do to the contrary refer to a "connection"
and not a "connector
block." It was argued that from the
distinction in the claims between "connection" and
"connector block"
the only inference is that the
distinction was purposeful as contradistinction between the device
and" the state of being
connected". However upon an
ordinary grammatical reading, in context, of claims 4, 5 and 6 these
claims set out what claim
1 "further comprising"
[comprised] of. If claim 1 referred to a device then these claims set
out what the device further
comprised of. The applicant argued that
the reference to at least one transmission tube and detonator in
claim 1 made it clear
that the state of connection consisted of a
connector block and a detonator and at least one transmission tube.
By amending it
to only a connector block the invention was narrowed
down thus broadening the scope. When reading unamended claim 1 it
must be
interpreted as follows:
"A
low energy blasting initiation system surface connection [for
initiation of a non-directional signal transmission in at
least one
transmission tube having a outside diameter by a low energy
detonator] comprising..." [my emphasis]. The fragment
in bold
is, as was argued on behalf of the respondent, the "for-use"
segment. The connection was to be used for initiation
with a low
energy detonator and a non-directional signal transmission. The
"connection" was thus a "connecting part"
consisting of elements for use in conjunction with a detonator and a
non-directional signal transmission;" connection"
in claim
1 was thus not only a junction point but a connecting part. The
specification in the amended claim 1 thus did not include
any claim
not wholly within the scope of a claim included in the specification
before amendment. The connection was thus a connecting
part which is
not narrower than a connector block and the scope of claim 1 was not
enlarged.
8.1
The applicant relied on the second amendment as being in
contravention of
section 51(6)
of the Act.
Section 51(6)
reads as
follows:
"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 the amendment; or (b)
the specifications
as amended would include any claim not fairly
based on matter disclosed in the specification before amendment.""
Unamended
the portion of claim 1 complained of read:
"a
tube engaging and gripping member fixed to the opposite end of said
segment to form, a slot between said housing and said
member having a
width slightly smaller than the transmission tube outside diameter,
said segment deforming in response to force
exerted on said member
for positioning the transmission tube in said slot; and" Amended
the specification of claim 1 read
as follows:
"
a tube engaging and gripping member fixed to the opposite end of said
segment to form a slot between said housing and said
member,[ the
slot being of arcuate cross-section, and being dimensioned and
configured to receive and retain therein a plurality
of transmission
tubes disposed within the slot, and the slot] having a width slightly
smaller than the transmission tube outside
diameter, said segment
deforming in response to the force exerted on said member for
positioning the transmission tube in said
slot; and" [ the
portion in brackets and bold were the additions] Claim 7 unamended
reads as follows:
"A
method of initiating a plurality of remote blasting signal
communicating elements with a low energy blasting imitation system
wherein an initiation signal is transmitted in a low-noise, time
controlled manner from a signal initiation source to the remote
elements, the method comprising the steps of:-
Arranging
said outgoing transmission tube opposing ends in side-by side
relationship with one another and in juxtaposed energy communicating
relationship with one another and in juxtaposed energy communicating
relationship with said detonator explosive composition whereby
activation of said detonator explosive composition initiates
non-directional signal transmission within said outgoing transmission
tubes for transmitting the initiation signal to the remote elements."
Amended
claim 7 reads as follows:
"A
method of initiating a plurality of remote blasting signal
communicating elements with a low energy blasting initiation
system
wherein an initiation signal is transmitted in a low-noise, time
controlled manner from a signal initiation source to remote
elements,
the method comprising the steps of:"
Arranging
said outgoing transmission tube opposing ends in side-by side
relationship with one another and in juxtaposed energy communicating
relationship with one another and in juxtaposed energy communicating
relationship with, [and in an arcuate array about,] said detonator
explosive composition whereby activation of said detonator explosive
composition initiates non-directional signal transmission
within said
outgoing transmission tubes for transmitting the initiation signal to
the remote elements, '[the portion in brackets
and bold being the
amended portion]
8.2
In the founding affidavit it was submitted that because in the
unamended claim the specification in claim 1 did not disclose
a slot
"being of arcuate cross-section" the amended specification
now attributed a specific curved shape to the slot.
The amended
specification of claim 1 thus included new matter and was not fairly
based on matter before the amendment.
8.3
The specifications in the unamended claim 7 did not specify the
configuration of the transmission tube opposing ends. After
the
amendment the disposition of the transmission tube opposing ends were
qualified. The amended specification of claim 7 thus
included new
matter and was not fairly based on matter before the amendment.
9.1
The main argument on claim 1 was that although the cross-section
shown on figure 2 of the slot 37 reflected an aspect of the
side wall
as curved, the other substantial aspects of the side wall are linear,
angled and funnel-shaped. The slot did not define
a form of a bow,
but an irregular J-shape which is not arcuate.
9.2
In claim 7 the amendment attributed a very specific shape to the
lay-out. Figure 4 did not depict an arcuate arrangement of
the
transmission tubes, in fact three transmission tubes were aligned
parallel and only one transmission tube was positioned at
a virtual
right angle relative to the other three transmission tubes.
10.1
In the answering affidavit the respondent denied that the
specification as originally filed did not disclose a slot as being
of
arcuate cross-section. Reliance was placed on figure 2 which
explicitly showed the slot 37 extended generally in perpendicular
relation to a longitudinal axis housing 11 and therefore the
detonator 15 was extended at a right angle in a J-shape, not a
L-shape,
to form a curve at the base. The original specification did
therefore disclose a curved cross-section, i.e. an arcuate
cross-section.
10.2
Pertaining to claim 7 the respondent pointed out that in the original
specification and amplified by figure 4 a curved or arcuate
array of
tubes 40 about explosive 22 contained in the housing 20 of detonator
15 was explicitly shown.
11.
On behalf of the respondent it was argued that in Mr Van Dijke's
answering affidavit the features of a slot being of "arcuate
cross-section" and the "outgoing transmission tube opposing
ends being arranged in an arcuate array" were broadly
described
in the original specification. There is nothing in the original
specification which is inconsistent with the features
and the
original specification is not wholly silent on the feature.
12.
Both counsel referred to Bateman Equipment Ltd and Another v Wren
Group (Pty) Ltd 2000(1) SA 649 SCA wherein Harms JA set out
the test
to be applied when considering whether an amendment offended against
section 51
(6) of the
Patents Act.:
"[20
]
It is a basic requirement of patent law that a patentee is not
entitled to claim more than he has disclosed and identified as
the
invention in the specification. That does not mean that the claim may
not extend beyond the examples or embodiments disclosed,
but only
that the claim may not be for something no covered by the general or
generalised disclosure of the invention. ...Transposed
to the
amendment stage, and taking into account that the effect of an
amendment is retrospective, the objective of
s 51(6
))b) is to prevent
an inventor from claiming ex post facto something not contained in
his original disclosure which has become available
for public
inspection. The previous Patents Act 37 of 1952, for instance, had a
substantially identical requirements 36(3)), namely
that the amended
claim had to be limited to matter disclosed in substance in the
original (cf Ethyl Corporation's Patent
[1972] RPC 169
(CA) at 195).
In that judgment the point was made that the provision should be
interpreted in a broad common sense way (at 192
line 23) and that it
should be given a liberal interpretation so as to permit any fair
amendment which has already in substance
been disclosed (at 195 line
9).
[21]
The Mond Nickel questions, having been formulated in a different
context, have to be adapted in order to fit facts of the present
case. So adapted one must determine first whether the objectionable
part or integer 'can be said to have been broadly described'
in the
original specification; then one must consider whether there is
anything in the original specification which is 'inconsistent
with'
the integer; and last whether the original specification is 'wholly
silent' on the integer.... "
13.1
In the original specification the slot's width was described. It was
positioned as "a slot 37 in generally perpendicular
relation to
the low energy detonator 15. The slot could be configured to receive
a plurality of tubes. "The slot 37 may be
extended at a right
angle in a J-shape at its base becoming parallel to the detonator
axis."
In
the original specification one side wall was J-shaped but the whole
slot was not completely curved. The shape was broadly described
in
the original specification; the slot described and depicted a J-shape
which had an arch, bow or curve in it. The original specification
was
not wholly silent on the shape or the nature of the shape of the
integer because a section of the slot is curved. The fact
that one
section of the slot is straight and not curved is not inconsistent
with the integer because the base of the slot was curved.
The curve
of the slot was covered by the general disclosure of the invention in
referring to it in a "J-shape."
With
a common sense and liberal approach I can not find that the amendment
offends section 51(6) in setting out new matter or is
not fairly
based on matter before the amendment.
13.2
It was argued by the applicant that in claim 7 the amendment
attributed a very specific shape to the lay-out of the transmission
tubes. This was not so in the original specification and thus it
introduced new matter.
Figure
4 depicted three transmission tubes that were aligned parallel and
one transmission tube was positioned at a virtual right
angle
relative to the other three transmission tubes.
Mr
Van Dijke pointed out that in the original specification and
amplified by figure 4 a curved or arcuate array of tubes 40 about
explosive 22 contained in the housing 20 of detonator 15 was
explicitly shown. His conclusion was; "Accordingly, the
specification
as originally filed discloses outgoing transmission
tube ends "in an 'arcuate array about' a detonator explosive
composition"
[par 32(c)]
There
was no reply to this paragraph in the replying affidavit.
I
shall answer the question whether this amendment offended s51(6) with
purposive construction through the eyes and with the learning
of Mr
Van Dijke rather than with the meticulous lawyer verbal analysis of
Mr Rademeyer; Sappi Fine Papers (Pty)Ltd v ICI Canada
Inc (formerly
CIL Inc) 1992 (3) 306 (A) at 319F-J.
I
accept Mr Van Dijke's assertion that the original specification
supported by figure 4 (upon which both parties relied) did disclose
outgoing transmission tubes ends in a curve about the detonator
explosive composition. There is accordingly not new matter after
the
amendment of claim 7 and the amendment was fairly based on matter in
the original specification.
14.
The respondent prayed that the costs of two counsel be granted. The
reason forwarded upon my questioning as to why two counsel
were
necessary, was not sound. It was argued that the applicant is
delaying the trial with this application. I do not find this
reason
to grant the costs of two counsel.
15.
I accordingly make the following order: The application is dismissed
with costs.
S.
Potterill
Judge
of the High Court
Matter
heard on: 03 September 2012 Delivered on: 13 September 2012
Attorney
for the Applicant: McCALLUM RADEMEYER & FREIMOND
(MFR
Ref: L14177/MAJR) (MRFTel: 011 789 1046) c/o JACOBON & LEVY INC
215
Orient Street
Arcadia
Pretoria.
(Ref:
J LEVY/DVN/K2633)
Attorney
for the Respondent: D M KISCH INC 223
Bronkhorst
Street
Nieuw
Muckleneuk
Pretoria.
Tel:
012 460 3203 (Ref: Mr A Kruger/rf)