Schlumberger Logelco Incorporated v Coflixip SA (256/2001) [2002] ZASCA 99 (6 September 2002)

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[2002] ZASCA 99
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Schlumberger Logelco Incorporated v Coflixip SA (256/2001) [2002] ZASCA 99; 2003 (1) SA 16 (SCA); 2002 BIP 35 (SCA) (6 September 2002)

THE SUPREME COURT OF
APPEAL
OF SOUTH AFRICA
Reportable
Case
No: 256/01
In
the matter between:
SCHLUMBERGER
LOGELCO INCORPORATED
Appellant
and
COFLIXIP
SA
Respondent
Coram
:
Harms,
Scott, Streicher, Nugent, JJA and Jones, AJA
Heard
:
22
August 2002
Delivered
:
6
September 2002
Patent –
apparatus using hose for transfer of fluid between seabed and sea
surface – infringement – lack of novelty – obviousness
– lack
of clarity – admissibility of expert evidence in regard to
obviousness.
J U D G M E N T
STREICHER,
JA
STREICHER JA:
[1] The appellant installed apparatus for the purpose of
transferring oil produced by a sub-sea deposit, from the seabed to
the sea
surface at a Soekor Field Development Project near Mossel
Bay. The Commissioner of Patents (Southwood J) found that by doing so
the
appellant infringed Patent 89/1418 (‘the patent’), granted an
order interdicting the appellant from infringing claims 1, 8 and
9 of
the patent and dismissed a counterclaim for the revocation of the
patent. With the necessary leave the appellant now appeals
against
the findings of the court
a quo
.
[2] The patent relates to an apparatus using at least
one hose for the transfer of fluid, particularly oil, between the
seabed and
the sea surface. The hoses so used are also referred to as
flexible-pipe risers or simply flexible risers. The flexible pipe is
characterized
by a composite construction with layers of different
materials, which allow large amplitude deflections without adverse
effects on
the pipe. Flexible risers accommodate differential motion
by an added length of pipe between the two points to be linked. The
added
length can be utilized in different patterns according to the
environmental conditions, the loads to which it is subjected and its
relative motion and position in relation to the seabed connection
point. As at the priority date of the invention, namely 24 February
1988, various configurations of flexible risers were known and
utilized. Those that are relevant for present purposes and were
considered
to be the major flexible riser configurations at the time
are known as the Free Hanging, Lazy S, Steep S, Lazy Wave and Steep
Wave
configurations which are illustrated in the figures below.
[3] In the case of the Lazy S, Steep S, Lazy Wave and
Steep Wave configurations the hoses extend in a catenary between the
surface
support and an intermediate positive buoyancy element
imparting to the hose, over a portion of its length, a curved
configuration
of concavity turned toward the seabed. The intermediate
element might be an arch of concavity turned toward the seabed, if
necessary
connected to the seabed by tie rods, a plurality of buoys
placed in succession and fastened to the hose, or a buoyancy chamber
connected
by tie rods to the seabed. In the Lazy S and Lazy Wave
configurations the portion of the hose below the intermediate element
exhibits
a catenary-shaped configuration to the level of the seabed,
the hose then extending on the seabed to a wellhead or to a
connecting
element located on the bed. In the Steep S and Steep Wave
configurations the portion of the hose between the intermediate
element
and the seabed is taut, the lower end of the hose being
fastened to a base resting on the seabed. In this type of
configuration it
is necessary to connect the lifting hoses to the
previously installed base and to connect the hose or hoses coming
from the wellhead
to this base.
[4] In the specification of the patent it is stated:
‘
The apparatus according to the invention is close to
the “STEEP S” or “STEEP WAVE” type in the sense that a part
of the hose
below the intermediate element is held taut by being
connected to a stationary point on the sea bed and is characterized
essentially
by the fact that it comprises holding means for at least
one zone of said lower part of the hose, connected to said stationary
point
and made to hold taut the part of the hose located between the
intermediate element and the holding means and to impart to the hose
in a vertical plane, a predetermined necessary curvature whose
concavity is directed in the direction of the wellhead or the
structure
located on the bed and from which the oil must be lifted.
In a preferred embodiment, said holding means comprise
at least one collar placed around the hose, between the intermediate
element
and the bed, said collar - - intended to take up the pull of
the hose - - being connected by at least one anchoring tie rod to the
stationary point, made preferably in the form of a deadman placed on
the sea bed. . . .
. . .
In this embodiment, it is advantageous also to position
on the hose, in its horizontal part, at the level of the sea bed, at
least
a second collar connected also by one or more tie rods to the
deadman.
. . .
Other holding means can be provided according to the
invention, such as for example articulated vertebrae extending from
the deadman
over a part of the length of the lower part of the hose,
the hose then being fastened to the deadman. In another embodiment,
these
holding means can consist of a neck solid with the deadman
performing a holding and a guiding, in a vertical plane, of the
corresponding
part of the hose.’
[5] Claim 1 reads as follows:
‘
1. Apparatus for transfer of fluid between the sea
bed and the sea surface particularly for the gathering and lifting of
oil produced
by a subsea deposit comprising at least one hose
extending in a catenary between the surface support and an
intermediate element
imparting to the hose, over a portion of its
length, a curved configuration of concavity turned toward the bed, a
part of the hose
between said intermediate element and the sea bed
being made taut by being fastened to a stationary point on the bed,
characterized by the fact that it comprises holding means for at
least one zone of said lower part of the hose, connected to the
stationary
point, consisting of a deadman
and made to hold taut
part of the hose located between the intermediate element and the
holding means,
and to impart to the hose in a vertical plane, a
predetermined curvature whose concavity is directed toward a wellhead
or similar
structure, located on the sea bed and from which the oil
must be lifted
.’
(My underlining.)
Like the court
a quo
I shall refer to the
underlined passages as integers (v) and (vii) respectively and to the
configuration proposed by the patent as
the pliant wave
configuration.
[6] Claim 8, which is dependent on claim 1, adds the
additional feature that the hose is continuous between the support
surface and
the structure located on the seabed from which the oil
must be lifted. Claim 9, which is also dependent on claim 1, adds the
additional
feature that the intermediate element consists of a group
of positive buoyancy elements fastened to the hose, spaced along its
length.
[7] It is convenient, as it will assist in explaining
the invention, to first deal with the question of infringement,
assuming that
the patent is valid.
INFRINGEMENT
[8] The following diagram is an as-built diagram of the
Soekor apparatus.
[9] The
diagram depicts an apparatus for the transfer of oil from a wellhead
on the seabed to a production platform (Sedco 1) floating
on the sea
surface. The apparatus consists of a continuous hose (a production
riser) (1) extending in a catenary between the production
platform
(the surface support) and an intermediate element consisting of
buoyancy modules (3). The buoyancy modules impart to the
hose, over a
portion of its length, a curved configuration of concavity turned
toward the bed. A part of the hose between the intermediate
element
and the seabed is made taut by being fastened to a stationary point
on the bed (detail 5). The stationary point consists
of a deadweight
anchor, also called a deadman (4) and the connection to the hose is
by way of a tieback clamp (8). A predetermined
curvature, whose
concavity is directed toward the wellhead, is imparted on the hose
below the tieback clamp (detail 5).
[10] The appellant contended that integers (v) and (vii)
were not present in the Soekor apparatus.
[11] The court
a quo
held that upon a proper
construction of the claim the apparatus (and not the holding means
alone) had to impart the predetermined
curvature required by integer
(vii) as it was, according to the court
a quo
, obvious that a
single holding means could not on its own hold taut a part of the
hose or impart to the hose a predetermined curvature.
Only the whole
apparatus could impart such a predetermined curvature.
[12] On my reading of claim 1, it provides that the
‘apparatus . . . comprises holding means . . . connected to the
stationary point
(at the bed) consisting of a deadman . . . made to
hold taut part of the hose . . . and (made) to impart to the hose . .
. a predetermined
curvature . . .’ (the insertions between brackets
are mine). So read, it is the holding means connected to the a
deadman which
has to impart the predetermined curvature to the hose.
[13] The appellant submitted that the holding means
utilized in the Soekor apparatus did not impart the predetermined
curvature to
the hose and that it therefore did not contain integer
(vii).
[14] Two witnesses gave expert evidence at the trial.
The appellant called Prof Larsen, a professor in marine structures in
the Norwegian
University of Science and Technology since 1984 where
he has been head of the Department of Marine Structures since 1998.
The respondent
called Mr Luppi, a mechanical and structural engineer,
who has since 1976 gained extensive experience in the engineering and
laying
of risers.
[15] Larsen expressed the view that a single clamp
connected to a deadman by a tie rod, could not by itself impart a
curvature on
an apparatus such as the one described in claim 1 and
did not do so in the case of the Soekor apparatus. I do not agree.
The Soekor
apparatus actually proves that it can be done. It is
self-evident that in order to impart a curvature on a part of an
apparatus you
need the apparatus on which the curvature is to be
imparted to do so. But, it does not follow that it is the apparatus
that imparts
the curvature. In this case the apparatus on which the
curvature is to be imparted consists of a hose and a buoyant
intermediate
element. According to the evidence of Larsen it is the
length of the hose (i.e. the positioning of the clamp on the hose),
the distance
between the deadman and the wellhead (i.e. the
positioning of the deadman on the seabed) and the length of the
tether which determined
the curvature of the hose towards the
wellhead in the Soekor apparatus. According to the evidence of Luppi
those three factors, coupled
with the way the apparatus was arranged,
more particularly the net uplift force exercised by the buoyant
intermediate element, determined
the curvature towards the wellhead.
This fourth factor was not canvassed with Larsen but it seems to me
to be obvious that it would
have an effect on the curvature. It
follows that on the evidence of both Larsen and Luppi, given an
apparatus consisting of a flexible
riser, with a buoyant intermediate
element, connecting a wellhead to a surface support, a different
position of the clamp on the
hose, or of the deadman on the seabed or
a different length of tether will bring about a different curvature.
They are, therefore,
in agreement that a holding means consisting of
a clamp, deadman and tether can impart a curvature on such an
apparatus. In the case
of the Soekor apparatus the curvature so
imparted was predetermined. A distinction needs to be drawn between
what determines the
extent of the curvature and what imparts the
curvature. The two expert witnesses as well as the court
a quo
failed to draw this distinction. In the Soekor apparatus the
curvature was imparted by the holding means when applied to the
apparatus
while the four factors mentioned above determined the
extent of the curvature so imparted. It follows that integer (vii) is
present
in the Soekor apparatus.
[16] The court
a quo
found that the area of the
hose underneath the clamp constituting the holding means in the
Soekor apparatus constituted a zone within
the meaning of the word
‘zone’ in integer (v). Integer (v) was, therefore, found to be
present in such apparatus. The appellant
submitted that this
interpretation of the word ‘zone’ conflicted with the
specification read as a whole and that on a proper
interpretation of
integer (v) a single clamp did not qualify as ‘a holding means for
a zone of the hose’. In this regard the
appellant relied on the
fact that according to the specification the holding means could be
provided by articulated vertebrae extending
from the deadman over a
part of the length of the lower part of the hose, or by a neck solid
with the deadman performing a holding
and a guiding, in a vertical
plane, of the corresponding part of the hose. Furthermore, in its
description of the preferred embodiment,
the specification states
that it is advantageous also to position on the hose, in its
horizontal part, at the level of the seabed,
at least a second collar
connected also by one or more tie rods to the deadman. In these
cases, so the argument went, a holding means
was provided for that
area of the hose to which the predetermined curvature was imparted
indicating that the ‘zone’ referred
to in claim 1 was such area.
[17] If the clamp imparts a predetermined curvature, as
I have already held to be the case, it at least serves as a holding
means
for that part of the hose constituting the curvature i.e. for
at least one zone of the lower part of the hose. Counsel for the
appellant
conceded that to be the case.
[18] It follows that, subject to the patent being valid,
the court
a quo
correctly held that the appellant infringed
the patent.
VALIDITY
[19] The three grounds of attack on the validity of the
patent are lack of novelty, obviousness and lack of clarity. The
appellant
no longer relies on a fourth ground of attack, namely
inutility, which was dismissed by the court
a quo
. I shall
deal with each of the three grounds in turn.
LACK
OF NOVELTY
[20] In terms of s 61(c) of the Patents Act 57 of 1978
(‘the Act’) a patent may be revoked on the ground that the patent
is not
patentable. Section 25(1) provides that subject to the
provisions of the section a patent may ‘be granted for any new
invention
which involves an inventive step’. At the time of
registration of the patent and in regard to the requirement that the
invention
must be new s 25(5) and (6) provided as follows:
‘
(5) An invention shall be deemed to be new if it does
not form part of the state of the art immediately before the priority
date of
any claim to that invention.
(6) The state of the art shall comprise all matter
(whether a product, a process, information about either, or anything
else) which
has been made available to the public (whether in the
Republic or elsewhere) by written or oral description, by use or in
any other
way.’
Section 31(a) of Act 38 of 1997 substituted the words
‘priority date of that invention’ for the words ‘priority date
of any
claim to that invention’. The amendment has no effect on the
case.
[21] The appellant relied on two items of prior art for
its attack on the novelty of the invention namely, on what has been
referred
to as the Rauma-Repola drawing and on GB Patent 2 163 403 A,
(‘the GB Patent’) more particularly Fig 1 thereof. The two
drawings
are reproduced hereunder.
[22] The appellant submitted that the riser
configurations depicted in these two drawings contained all the
integers of claim 1 of
the patent whereas the respondent disputed
that it contained integer (v) i.e. it disputed that the drawings
depicted holding means
for a zone of the lower part of the hose
connected to a stationary point consisting of a deadman.
[23] In
Netlon Ltd and Another v Pacnet (Pty)
Ltd
1977 (3) SA 840
(A) at 861H-862B Trollip JA said in
regard to the requirement that an invention must be new:
‘
[T]he defence (or objection) of anticipation relates
to the claims and not to the description of the invention in the body
of the
specification in suit (see, too, the
Letraset
case,
supra
at pp. 264 - 5). The prior printed publication alleged
to be anticipatory must be construed, for the exercise is primarily
one of
construing and comparing the two documents; moreover it must
be construed as at the date of its publication to the exclusion of
information
subsequently discovered; the question then considered is
whether the prior publication "describes" the invention in
suit
as claimed; that is, whether it sets forth or recites at least
the latter's essential integers in such a way that the same or
substantially
the same process or apparatus is identifiable or
perceptible and hence made known or the same or substantially the
same product can
be made from that description in the prior
publication; if the description in the prior document differs, even
in a small respect,
provided it is a real difference, such as the
non-recital of a single essential integer, the anticipation fails;
the opinions of
expert-witnesses that the prior publication does or
does not anticipate a claim in suit must be disregarded for that is
for the Court
to decide.’
[24] A court may and should nevertheless in appropriate
cases have regard to the opinion of expert witnesses as to what is
depicted
in a drawing. In
C van der Lely NV v Bamfords Ltd
[1963]
RPC 61
(HL) at 71, quoted with approval in
Letraset Ltd v Helios
Ltd
1972 (3) SA 245
(A) at 267D-E, Lord Reid said in regard to
photographs:
‘
The question is what the eye of the man with
appropriate engineering skill and experience would see in the
photograph, and that appears
to me to be a matter for evidence. Where
the evidence is contradictory the Judge must decide. But the Judge
ought not, in my opinion,
to attempt to read or construe the
photograph himself; he looks at the photograph in determining which
of the explanations given
by the witnesses appears to be most worthy
of acceptance.’
There are obviously photographs the interpretation of
which requires no expertise. The passage should, in my view, be read
subject
to that qualification (see
Filta-Matix (Pty) Ltd v
Freudenberg and Others
[1997] ZASCA 110
;
1998 (1) SA 606
(SCA) at 615C-616C). The
same approach should be adopted in the case of drawings.
[25] Larsen and Luppi were agreed that the risers
depicted in the two drawings were flexible but disagreed that they
were continuous.
Luppi expressed the view that in both cases the
riser base (11 in Fig. 1 of the GB patent) incorporated a deflection
device with
two flange connections, one for the vertical hoses and
the other for the horizontal hoses depicted in the two drawings.
Larsen on
the other hand was of the opinion that the hoses depicted
in the drawings were continuous from the surface support to the
wellhead.
Furthermore, that they were merely deflected at the riser
base by a deflecting device connected to a stationary point
consisting
of a deadman, which, in the result, acted as a holding
means for a zone of the lower part of the hose. The reason given by
him for
his opinion was that by having a flexible hose from the
surface support to the wellhead one would avoid having connectors on
both
sides of the deflection device as those connectors had cost
implications. He also expressed the opinion that the mere description
in the GB Patent of item 11 as a deflection device indicated that it
was the hose that was being deflected. Luppi, on the other hand,
thought that it was the oil that was being deflected by the
deflecting device.
[26] The court
a quo
found that Larsen was
speculating and that he was not able to point to anything in the
drawing which indicated that the hose was
continuous. It found that
Luppi’s evidence was consistent with what was known in the
industry, as at February 1988, as a Steep
S configuration. For these
reasons it held that it could, on the evidence, not be found that
integer (v) was present in the Rauma-Repola
drawing or in Fig 1 of
the GB patent.
[27] In
my view there is no merit in the reasons given by Larsen for his
conclusion. The deflection device may either be a device
to deflect
the hose or it may be a device for the deflection of oil flow. At the
time when the drawings were produced the Steep S
or Steep Wave
configurations for flexible risers were well known and commonly used.
In both these configurations a hose from the
surface support was
connected to a riser base on the seabed and another hose was used to
connect the riser base to the wellhead.
That was done notwithstanding
the fact that those connections had cost implications. In these
circumstances there seems to be no
reason to interpret the two
drawings as depicting, at the riser base, anything other than
connections similar to those in the Steep
S or Steep Wave
configurations.
[28] It follows that the attack on the validity of the
patent on the ground of lack of novelty correctly failed in the court
a quo
.
OBVIOUSNESS
[29] In regard to the requirement in s 25 (1) that an
invention must involve an inventive step in order to be patentable, s
25(10)
provided, before its amendment by s 31(d) of Act 38 of 1977:
‘
Subject to the provisions of section 39(6), an
invention shall be deemed to involve an inventive step if it is not
obvious to a person
skilled in the art, having regard to any matter
which forms, immediately before the priority date of any claim to the
invention,
part of the state of the art by virtue only of subsection
(6) (and disregarding subsections (7) and (8).’
As in the case of s 25(5) the amendment substituted the
words ‘immediately before the priority date of any claim to the
invention’
for the words ‘immediately before the priority date of
the invention’. Subsection 25(6) is quoted in para 17 above.
[30] The art we are concerned with is the design and, to
a lesser degree, the installation of flexible riser systems for the
transfer
of oil between the seabed and the sea surface. As at the
priority date various configurations of flexible risers were known
and utilized.
As stated in para 2 above those relevant for present
purposes and considered to be the major flexible riser configurations
at the
time are known as the Free Hanging, Lazy S, Steep S, Lazy Wave
and Steep Wave configurations and are illustrated in para 2.
[31] The disadvantages of the Lazy S and Lazy Wave
configurations as opposed to the other two configurations were the
length of the
flexible riser, a particularly expensive piece of
equipment, between the wellhead and the surface support and the bulk
at the level
of the seabed when a large number of hoses or of bundles
of hoses were used. The disadvantage of the Steep S and Steep Wave
configurations,
on the other hand, was that each of the lifting hoses
and the hose or hoses coming from the wellhead had to be connected to
a previously
installed base. The base needed to be heavy with large
dimensions equipped with connection systems. The connection
operations had
to be performed by divers or with the aid of costly
remote-controlled connecting equipment. It is common cause that the
invention
succeeded in overcoming these drawbacks.
[32] Having regard to the prior art the step taken by
the respondent was to find a configuration, which resulted (as in the
case of
the Steep configurations) in a hose being used which was
shorter than in the Lazy configurations, but which was nevertheless
continuous
as in the case of those configurations. It did so by
employing a holding means for at least one zone of the lower part of
the hose,
connected to a stationary point consisting of a deadman and
made to hold taut part of the hose located between the intermediate
element
and the holding means and made to impart to the hose in a
vertical plane, a predetermined curvature whose concavity was
directed
toward a wellhead or similar structure located on the
seabed. That is claimed to have constituted an inventive step.
[33] In
Mölnlycke AB and Another v Procter &
Gamble Limited and Others (no 5)
[1994] RPC 49
(CA) at 113 Sir
Donald Nicholls, Vice-Chancellor said in respect of similarly worded
statutory provisions:
'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.’
The passage was quoted with approval in
Ensign-Bickford
(South Africa)(Pty)Ltd and Others v AECI Explosives and Chemicals Ltd
1999 (1) SA 70
(SCA) at 81E-F. The court
a quo
said in this
regard:
‘
Previously it had been considered settled law that it
is for the court to decide the question of obviousness and the
evidence of expert
witnesses was held to be inadmissible -
Veasey
v Denver Rock Drill and Machinery Co Ltd supra
1
at 262;
Gentiruco
case
2
at
618A;
Burrell
3
p156-157.
Despite the views of
Burrell
at p157, it will be
accepted that the law is as stated by the court in
Ensign-Bickford
(SA)and Others v AECI Explosives and Chemicals Ltd supra
. It must
be accepted that the Supreme Court of Appeal was aware of the legal
position and despite the fact that the court did not
expressly
overrule the previous judgments it must have intended to change the
law on this question.’
[34] The
court a quo
probably meant to say that
the opinion as such of expert witnesses as to whether an invention
was obvious was previously held to
be inadmissible. In my view the
passage in the
Ensign-Bickford
case was not intended to be
interpreted so as to change the law in respect of the admissibility
of expert evidence in regard to the
question of obviousness. 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.
[35] Larsen’s evidence was tendered, amongst other
reasons, to prove that the improvement effected by the respondent was
obvious.
In this regard he relied on the Rauma-Repola drawing and
Fig 1 of the GB patent as well as on the Bechtel patent. The Bechtel
patent
relates to systems of flexible risers and to methods of
installing them, more particularly to the configuration (‘the
Bechtel configuration’)
depicted in the figure below.
In the Bechtel configuration the intermediate element
consists of a buoyancy chamber connected by tie rods to the seabed.
The upper
end of the tether is connected to the intermediate element.
Movement of the riser is restrained by various means of attaching it
to the intermediate element thereby making it possible to design the
upper and lower legs of the riser to optimum lengths. It is
common
cause that, like the pliant wave configuration, the Bechtel
configuration overcame the disadvantages of the Lazy and Steep
configurations.
[36] Larsen
testified that the Lazy S and Bechtel configurations differed from
the configuration according to claim 1 in only one
respect namely
that the upper end of the tether was connected to the intermediate
buoyancy element instead of to a portion of the
hose below the
intermediate element. As at the priority date the buoyancy system
used in the Bechtel configuration as well as a
buoyancy system
consisting of distributed buoyancy modules, as in the case of the
Wave configurations, were known. The buoyancy modules
could, like the
buoyancy chamber, be tied down to a base on the seabed. In that case
the logical place to position the tether would
be on the hose below
the lowest buoyancy module, simply because a buoyancy module would
have no function if positioned below the
connecting point of the
tether. He further expressed the opinion that if the hose in the
Rauma-Repola drawing or in Fig 1 of the
GB patent was not continuous
but had to be connected to the base on the seabed, it would have
required no inventive ingenuity from
a person skilled in the art to
realize that it could easily be made to be continuous by the use of
an elbow as a holding means, as
is required by claim 7. Claim 7
reads:
‘
Apparatus according to claim 1, wherein said holding
means comprise a neck solid with the deadman performing a holding and
guiding,
in the vertical plane, of the corresponding part of the
hose, said hose being held in the deadman by a collar.’
[37] Luppi pointed out that the invention solved a
problem in a way none of the prior art suggested. He conceded that
the Bechtel
patent also overcame the drawbacks of the Lazy and Steep
configurations referred to but said that the invention did so in a
more
elegant way. In the event the pliant wave configuration is being
extensively used while the Bechtel configuration is not used at
all.
[38] The
court a quo
held:
‘
The configurations used had settled into the
well-known configurations referred to in this judgment. No one had
conceived of a configuration
which used elements of the Lazy and
Steep configurations. After the patent was registered it has been
used extensively and with apparent
commercial success.
The attack on the patent based on obviousness is
therefore not upheld.’
[39] The appellant submitted that the
court a quo
should have found that the invention was obvious on at least the
following grounds:
The only difference between the patent and the Bechtel
patent is the use of distributed buoyancy instead of a single
buoyancy element.
The only difference between the Rauma-Repola
configuration, Fig 1 of the GB patent and the embodiment disclosed
in Fig 7 of the
specification is that in Fig 7 the hose is
continuous through the elbow or neck.
Both types of buoyancy as well as continuous hoses were
well known at the time.
[40] The Bechtel configuration is in essence a reverse
Lazy S configuration. In the Bechtel patent specification the
invention is
summarized as follows: ‘The present invention is
concerned to allow lazy S installations to be made comparatively
readily on a
pre-positioned midwater support. . . .’. The
Rauma-Repola drawing and Fig 1 of the GB patent, on the other hand,
would appear to
depict nothing other than a Steep S configuration.
The appellant submitted that there was virtually no difference
between the configuration
according to the invention and the Lazy
configuration but also submitted that there was virtually no
difference between the configuration
according to the invention and
the Steep configuration which differs substantially from the Lazy
configuration. The fallacy of the
submission is demonstrated by the
two comparisons. The configuration according to the invention is in
effect a hybrid of the Lazy
and Steep configurations. By marrying the
two configurations the inventor solved problems associated with the
Lazy as well as the
Steep configurations.
[41]
Although the step taken by the inventor was a simple one I am, having
regard to the technical evidence, unpersuaded that it
was not
inventive. In the light of the secondary evidence I am persuaded that
it was inventive. The invention solved a problem which
had huge
financial implications to companies with substantial financial
resources. As at the priority date the Steep configurations
were
commonly being used. The installation of these configurations
required the use of divers and, depending on the conditions, costly
remote-controlled connecting equipment. That would not have been the
case if it would have been obvious to ‘a person skilled in
the art’
that it could be avoided by simply employing a holding means in the
way suggested by the patent. It is true that the Bechtel
patent
overcame the aforesaid disadvantages of the Steep and Lazy
configurations but it did so in a less satisfactory way than the
invention. Bechtel is a very big engineering company, which
recognized the disadvantages of the existing configurations and was
attempting
to alleviate those problems. Yet, the solution proposed by
the patent would appear not to have been obvious to Bechtel’s
designers.
[42] The court
a quo
therefore correctly
dismissed the attack on the validity of the patent on the basis that
the invention was obvious.
LACK
OF CLARITY
[43] Section
61(1)(f) of the Act provides that a patent may be revoked on the
ground that the claims of the complete specification
are not clear.
[44] The appellant contended that the reference to ‘at
least one zone’ in claim 1 was not clear in that the phrase
contemplates
more than one zone of the hose. Integer (v) requires the
apparatus to be characterized ‘by the fact that it comprises
holding means
for at least one zone of said lower part of the hose’.
I have already held that that part of the hose constituting the
curvature
is a zone of the lower part of the hose. The fact that the
claim contemplates more than one zone in no way renders it
problematical
to identify that curvature or any other part of the
hose as a zone. In my view there is no merit in the submission.
[45] Claim 1 reads: ‘Apparatus . . . comprising . . .
a
part of the hose
between said intermediate element and the
sea bed being made taut by being fastened to a stationary point on
the bed characterized
by the fact that it comprises holding means for
. . . and made to hold taut
part of the hose
located between
the intermediate element and the holding means . . . .’ The
appellant submits that the ‘part of the hose located
between the
intermediate element and the holding means’ fell within the ‘part
of the hose between said intermediate element and
the
holding means’; that it was unclear what the purpose was of the
second reference to a part of the hose being held taut; and
that it
was unclear how the two references to parts of the hose which were
described differently, could be reconciled.
[46] In
my view there is no merit in these submissions. The first reference
to ‘part of the hose’ is in the context of the hose
between the
intermediate element and the seabed being made taut by being fastened
to a stationary point on the seabed while the second
reference is in
the context of the holding means being made to hold taut part of the
hose located between the intermediate element
and the holding means.
In determining whether an infringement had been committed the
question would be whether part of the hose between
the intermediate
element was being made taut by being fastened to a stationary point
on the seabed and whether the holding means
referred to in integer
(v) had been made to hold taut part of the hose located between the
intermediate element and the holding means.
There is no suggestion to
be found in the claim or in the rest of the specification that the
parts referred to may not be the same
part.
[47] In
the result the appeal is dismissed with costs including the costs of
two counsel.
________________ P E
STREICHER
JUDGE
OF APPEAL
Harms,
JA)
Scott,
JA)
Nugent
JA)
Jones,
AJA) concur
1
1930 AD 244.
2
Gentiruco AG v Firestone SA (Pty) Ltd
1972 (1) SA 589
(A).
3
Burrell’s South African Patent and Design Law
, 3
rd
ed.