Binder, J.V. v Vane, G

Re: JOHANN VINCENZ BINDER
And: GARY VANE
No. Q G9 of 1990
FED No. 602
Patents
(1992) AIPC 90-917
(1992) 25 IPR 395

COURT

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
Spender J.(1)

CATCHWORDS

Patents - infringement - combination of known integers - 'pith and marrow' test - whether alleged infringer has adopted all essential features - essential features determined from claims - mechanical equivalents - allegedly infringing design had different object - functional differences.

Patents - claim for revocation - obviousness - hypothetical 'skilled worker in the field' - common general knowledge in trade at relevant time - known need - substantial commercial success of claimed invention - novelty - reverse infringement test - sufficiency of description - matter of degree - clarity and succinctness.

Patents Act 1952 ss. 40, 100.

The Wellcome Foundation Limited v. V. R. Laboratories (Aust.) Proprietary Limited (1980-81) 148 CLR 262.

Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Ltd (1979-80) 144 CLR 253

Welch Perrin and Company Proprietary Limited v. Worrel (1961) 106 CLR 588.

Radiation Limited v. Galliers and Klaerr Proprietary Limited (1938) 60 CLR 36

Palmer v. Dunlop Perdriau Rubber Company Limited (1937) 59 CLR 30

Olin Corporation v. Super Cartridge Co Pty Ltd (1977) 51 ALJR 525

Rhone-Poulenc Agrochimie SA v. UIM Chemical Services Pty Ltd (1987) 75 ALR 601

Populin v. H. B. Nominees Pty Ltd (1981) 59 FLR 37

Allsop Inc. v. Bintang Ltd (1989) 15 IPR

Decor Corporation Pty Ltd v. Dart Industries Inc. (1988) 13 IPR 385

Avion Engineering Pty Ltd v. Fisher and Paykel Healthcare Pty Ltd (1991) AIPC 90-755

No-Fume Ld v. Frank Pitchford and Co. Ld (1935) 52 RPC 231

Marconi v. British Radio Telegraph and Telephone Company Ld (1911) 28 RPC 181

Klaber's Patent (1906) 23 RPC 461

Edison and Swan Electric Light Co v. Holland (1889) 6 RPC 243

Clark v. Adie (1875) 10 LR Ch App 667

HEARING

BRISBANE

#DATE 29:7:1992

Counsel for the applicant: Mr B. O'Donnell

Instructed by: Mighell, Lee-Bryce and Vandeleur

(now Vandeleurs)

Counsel for the respondent: Mr A. Crowe

Instructed by: Barry, Beaver and Stenson

ORDER

1. The application is dismissed. 2. The cross-claim is dismissed.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

This is a claim for infringement of a patent for an improved sugar cane planter. There is a cross-claim by the respondent for revocation of the patent, on the grounds of want of novelty and obviousness and also on the ground that the complete specification fails to comply with s. 40 of the Patents Act 1952, in that the specification is said not to "fully describe the invention" nor are the claims said to be "clear and succinct and fairly based on the matter described in the specification".

The Patents Act 1952 was repealed by s. 230 of the Patents Act 1990. Sub-regulation 23.26(1) of the Patent Regulations 1991 provides that the 1952 Act applies to an action or proceeding made or started under that Act and not finally dealt with or determined before the commencing day of the 1990 Act in which the validity of a patent is disputed or which concerns infringement of a patent. This action was instituted before commencement of the 1990 Act and therefore it is the provisions of the 1952 Act which are to be applied in the determination of the issues in this proceeding: cf. N.V. Phillips Glow Lamp and Fabricon v. Mirrabella International Pty Ltd (No. G351 of 1991; unreported judgment of Wilcox J. of 14 July 1992).
Johann Binder is the registered proprietor of Letters Patent No. 518337 by which he was granted the exclusive right for a term of sixteen years commencing on 31 January 1979 to, inter alia, make, use and exercise throughout Australia an invention described in those letters patent and known as "An improved sugar cane planter". Mr Binder's patent was granted in 1982. Since about 1979 a company, H. B. Nominees Pty Ltd in Innisfail, has manufactured and sold sugar cane planters. Mr Binder and his wife are the only shareholders in that company. The company has made and sold between 150 and 200 planters, which are known as the "H. B. M. billet planters".
A stick of sugar cane consists of segments separated by nodes. At each node is a eye or a bud and the eyes alternate from one side of the stick to the other side with successive nodes. The sugar cane is propagated from billets, or setts, which are short pieces of sugar cane, typically 12 to 14 inches in length, containing a number of eyes or buds to each billet. Mechanical sugar cane harvesters cut the sticks of cane into billets. The sugar cane planters with which this case is concerned receive a large number of such billets and the object of the planters is to plant the billets in a furrow in an approximately linear configuration; that is to say, the billets are generally oriented parallel to the furrow. Sticks of cane grow from the eyes on the billet and on maturity are harvested by a mechanical harvester which cuts the sticks just above ground level. That part of the sugar cane plant below ground, called a ratoon, sends forth further sticks which are again harvested. It is usual practice to have two or three ratoon crops before the field is ploughed and billets are once again planted.
Most sugar cane is planted by machines in which whole sticks of cane are fed manually into the machine, which chops the whole sticks into billets which are then treated with fungicide, dropped through a chute into a trench or furrow and covered with soil by the machine as it moves across the field which has been previously prepared for planting. A billet planter takes billets from a sugar cane harvester and obviates the need for whole sticks of cane to be harvested for the purpose of planting a sugar cane crop.
The "H. B. M. billet planter", which is the machine manufactured pursuant to the applicant's patent, is the most widely used billet planter in Australia.
Mr Binder is a qualified fitter and turner and lives at Wangan, a town approximately five miles outside Innisfail. Innisfail is the centre of a major sugar cane growing area of northern Queensland. H. B. Nominees Pty Ltd has approximately 25 to 30 full-time employees and carries on the business of manufacture of farm machinery, predominantly catering to the sugar cane industry. It manufactures a range of equipment, in particular, sugar cane planters, fertilisers, cultivators, and transport equipment for harvesting. Mr Binder says that when billet planters came on to the market in the mid-1970s the difficulty that had to be resolved was the production from a large quantity of randomly scattered billets of different shapes and sizes of a result where the billets were placed into the ground at regular intervals and with the correct alignment.
An early billet planter was produced by Massey-Ferguson (Australia) Ltd ('Massey-Ferguson'). The planter consisted of two parts. At the rear was a very large bin, with the front and rear sides sloping in towards the bottom, into which the billets would be delivered. On the front wall of the bin was a chain type elevator in three sections extending the full width and height of the front wall of the bin. That elevator would carry billets over the front wall of the bin and drop them into a chute. The chute was so angled that it would drop the billets into a planter which was placed on a separate set of wheels towed immediately behind the tractor and in front of the large bin. Once the billets were dropped into the planter, they would be oriented in the correct direction and planted in a furrow dug by a plough forming the base of the planter. There was also a mechanism in the large bin for preventing more than a small number of billets per section of the elevator being rotated into the chute at one time. This mechanism consisted of a drum with protrusions positioned at the top of the front wall of the bin and rotated in the opposite direction to the movement of the elevator, which stripped the elevator of excess billets.
Mr Binder says that the Massey-Ferguson machine had a number of disadvantages. Because of the width of the elevator and the large number of billets pressing against the elevator, approximately 2 tonnes, the machine was irregular in its planting the billets into the ground; the machine was severe on the billets, the drum on top of the elevator continually raking billets from the elevator and billets were pressed against the elevator; the fungicide arrangement, which consisted simply of pouring fungicide into the bottom of the large bin, was rather crude; the bin, elevator and chute as one part was separately articulated from the planter and plough mechanism as another part; and the machine was very large, cumbersome and expensive.
A few years later, in about 1977 or 1978, a new machine by Populin, Populin and Scalia ('Populin') was released on the market which did away with the two part Massey-Ferguson design. It consisted of a large narrow bin at the rear, from which an elevator would take cane billets to the smaller bin at the front of the machine from which a second elevator would take billets into a planting chute. Both of the elevators were chain elevators with cleats. There was no fungicide tank or other provision for dipping the cane billets in fungicide. There was, however, provision for spraying fungicide on the cane billets as they were lowered into the ground.
According to Mr Binder, the Populin machine also had disadvantages. It was larger than the Massey-Ferguson machine and was quite cumbersome and very expensive; it needed an operator to supervise the passage of cane billets from the large bin into the small bin so as to ensure regularity in the delivery of cane billets into the ground; the output of the machine was quite slow; there was only a single elevator feeding billets into the chute for planting and the rate of planting suffered. Mr Binder says that it was able to do only some eight acres a day. It had difficulties in operating on sloping ground. The second elevator was not in line with the tractor and therefore any angling of the machine produced either an increase or decrease in the rate of feeding. The absence of a fungicide tank meant that the cane billets were not dipped in fungicide. Dipping produced a better germination rate than the spraying.
Mr Binder then sought to produce a sugar cane planter which was to be smaller and more compact than either the Massey-Ferguson or Populin planters. He says that the principal advantages of the billet planter that he designed over the Massey-Ferguson and Populin planters were that his design was more compact and handled better; the rate of output of his planter was faster than the Populin planter, and as fast as the Massey-Ferguson would have been; his machine produced a regular feeding rate; the point at which the machine pivoted when raised by the tractor was shifted in the "H. B. M. billet planter" to the front of the machine, whereas in the Populin machine it was in the mid-section of the trailer, which caused the rear bin to fall back and the elevator to slope backwards. His design incorporated a dipping device, unlike the Populin planter, and his design was contained within the one unit, unlike a Massey-Ferguson and used only one bin and one elevator, unlike the Populin. The elevator on the "H. B. M. billet planter" incorporated two chain elevators, whereas the Populin had only one chain elevator and the Massey-Ferguson had three.
In Populin v. H. B. Nominees Pty Ltd (1981) 59 FLR 37, the owner of the Populin patent claimed that the "H. B. M. billet planter" infringed the Populin patent. Connolly J. in the Supreme Court of Queensland found against infringement and his judgment was upheld by the Full Court of the Federal Court consisting of Bowen C.J., Deane and Ellicott JJ. The Full Court held that the separate nature of the small bin and the supply container in the Populin machine was a deliberate and essential feature of the patented invention. In Mr Binder's machine, the trough at the front of his hopper and the rear part of it were elements of one large container. The Full Court held that on the "pith and marrow" test Mr Binder had not adopted the deliberate and essential feature of the Populin machine, namely, the separate small bin and the supply container of that machine.
Mr Gary Vane, the respondent, carries on an engineering and welding business in partnership with his wife under the name "G. and R. J. Vane Welding" in Mackay, that business commencing in approximately February 1989. It is not in dispute that Mr Vane had up until October 1990 manufactured some twenty-three "Vane" billet planters to his design, of which approximately twenty-one had been sold. I am satisfied that the sale price of the "Vane" planter and of the "H. B. M. billet planter" is approximately the same, and of the order of $17,500.00.
Mr Vane's employment history includes working as a boilermaker for approximately eight years for Bagot's Engineering in Ayr where he was involved in design and manufacture of farming implements, in particular, a stubble shaver. After cane has been harvested, a stubble shaver cuts the remaining cane that is above the ground, cutting off the excess cane below ground level. A mechanical harvester cannot cut the cane below ground level because that would result in dirty cane being sent to the mill. Mr Vane says that during his period at Bagot's Engineering, he reached the view that chains and cleats on billet planters were susceptible to being clogged with cane trash leading to stoppages, and that the use of chains and cleats for elevating cane billets was inefficient. In his work as a boilermaker at Riverside Mine, about 200 kms. west of Mackay, he had observed the use made of conveyor belts and the systems utilising conveyor belts in the operation of that mine. Mr Vane says that full stick planters are a slow and labour intensive means of planting cane. The cane sticks are cut by hand and then fed into the planter and typically a full stick planter would plant cane at about the rate of 1.5 to 2 tonnes per acre. Notwithstanding a slow rate of planting cane, there was a good strike rate from that method of planting cane.
Mr Vane says that billet planters available prior to the development of his machine were based on a false design philosophy, endeavouring to copy the full stick planters in planting at 1.5 to 2 tonnes per acre. He says that the mechanical harvesting of the billets, their collection in a tipper bin, and their transfer from the tipper bin into the billet cane planter, cause damage to the billets, including the eyes, which means that there is a significant impairment in the strike rate obtained from them. As a consequence he endeavoured to deliver more billets in the planting operation to overcome the loss factor associated with the treatment that the billets had to endure prior to being planted in the ground. For these reasons he thought that a conveyor belt was preferable to a system of chains and cleats for elevating the cane billets, that a rubber conveyor belt would help in causing as little damage as possible to the billet while it was in the planter, and a hopper which tilted completely was much better than using a moving bottom floor which tended to scrape the billets against the side walls as it was raised.
Mr Vane says that he completed manufacturing his planter about 16 November 1989 and shortly thereafter made contact with Mr Binder.
There is a difference in the recollection of Mr Binder and Mr Vane as to the contact between them. Mr Vane says that he invited Mr Binder to inspect the machine that Mr Vane had built. He said that he had contacted Mr Binder because he knew that Mr Binder had a patent in respect of his machine and that he had sued in the past for alleged breach of patent and Mr Vane wanted Mr Binder to be satisfied that Mr Vane's machine was different and did not involve breach of patent. Mr Vane says that Mr Binder inspected the machine at Mr Vane's premises in Mackay on Saturday 2 December 1989 and, according to Mr Vane, Mr Binder, when asked what he thought of the machine, said he would "have to think about it."
According to Mr Binder, he says that he received a call from Mr Vane in June 1989, the purpose of that contact being a request by Mr Vane to manufacture Mr Binder's billet planter under licence. A severe cyclone in the Burdekin and Mackay areas shortly before the telephone call had flattened most of the cane crops in that area, with the consequence that the cane was unsuitable for use in whole stick planters. According to Mr Binder, Mr Vane said there was a substantial demand for the "H. B. M. billet planter" in Mackay and that Mr Binder was not able to supply machines to meet the demand. That request to grant a licence was declined.
According to Mr Binder, he telephoned Mr Vane shortly before Christmas as he had heard reports that Mr Vane had been demonstrating a billet planter. Mr Binder told Mr Vane of reports made to him that Mr Vane had been copying his (Mr Binder's) machine. Mr Binder asked Mr Vane if he could come to see the machine and he says that on a Saturday in January 1990 he went to Mackay to Mr Vane's premises, where Mr Binder closely examined the Vane machine and also saw an "H. B. M. billet planter" in the workshop, which had been built either in 1989 or 1990. Mr Vane, according to Mr Binder, told him that the H. B. M. machine was in the workshop for repairs.
According to Mr Binder, he told Mr Vane he was infringing his patent, and he asked Mr Vane whether he was aware that Mr Binder had a patent. Mr Vane said that he was. He had a copy of the patent in his workshop which he showed to Mr Binder and he said that his legal advice was that his machine not infringing Mr Binder's patent. According to Mr Binder, he told Mr Vane that he was infringing the patent and that, if he did not stop, Mr Binder would take Mr Vane to court.
This application in the Federal Court was filed on 22 January 1990.
Mr Binder alleges that Mr Vane has infringed claims 1, 3 and 4 of Letters Patent No. 518337. A determination as to whether Mr Vane has infringed claim 1 of the patent will be determinative of whether he has also infringed claims 3 and 4.
Mr Binder's patent is a combination patent in that claim 1 is a combination of integers, each one of which is not novel in itself, the claim to novelty being based on the combination of those known integers. In Klaber's Patent (1906) 23 RPC 461 at 469, Lord Davey said:

" A proper combination for a Patent is the union of two or more integers, every one of which elements may be perfectly old, for the production of one object which is either new, or at any rate is for effecting an old object in a more convenient, cheaper, or more useful way. But the point in a combination Patent must always be that the elements of which the combination is composed are combined together so as to produce one result. "

This passage was quoted with approval by Dixon J. in Palmer v. Dunlop Perdriau Rubber Company Limited (1937) 59 CLR 30 at 73.
I accept that the critical question on the issue of infringement is:

" ...not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged to infringe. It is whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing.":

Radiation Limited v. Galliers and Klaerr Proprietary Limited (1938) 60 CLR 36 at 51 per Dixon C.J.

It is well settled that to establish infringement it must be shown that each and every one of the essential features or integers of the patent have been taken: Populin v. H.B. Nominees Pty Ltd (1981) 59 FLR 37 at 42; Rhone-Poulenc Agrochimie SA v. UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496; Allsop Inc. v. Bintang Ltd (1989) 15 IPR 686 at 698.
Where the substantial idea disclosed by the specification and made the subject of a definite claim has been taken, a variation to or substitution of a mechanical equivalent for one of the known integers will not avoid infringement. In Marconi v. British Radio Telegraph and Telephone Company Ld. (1911) 28 RPC 181 Parker J. at 217 said:

" It is a well-known rule of Patent law that no one who borrows the substance of a patented invention can escape the consequences of infringement by making immaterial variations. From this point of view, the question is whether the infringing apparatus is substantially the same as the apparatus said to have been infringed. "

This consideration is the basis of the "pith and substance" or "pith and marrow" test, classically formulated in the judgment of James L.J., delivering the judgment of the Court, in Clark v. Adie (1875) 10 LR Ch App 667 at 675, where he said:

" The patent is for the entire combination, but there is, or may be, an essence or substance of the invention underlying the mere accident of form; and that invention, like every other invention, may be pirated by a theft in a disguised or mutilated form, and it will be in every case a question of fact whether the alleged piracy is the same in substance and effect, or is a substantially new or different combination. "

There is a detailed collection of authorities on the principle of the "pith and marrow" doctrine by Lee J. in Avion Engineering Pty Ltd v. Fisher and Paykel Healthcare Pty Ltd (1991) AIPC 90-755 at 37,285-37,289.
In Olin Corporation v. Super Cartridge Co Pty Ltd, (1977) 51 ALJR 525, Gibbs J., as he then was, said at 530:

" ...the principle that there may be infringement by taking the 'pith and marrow' or the substance of invention does not mean that there will be an infringement where the patentee has by the form of his claim left open that which the alleged infringer has done. And it does not affect the fundamental rule that there will be no infringement unless the alleged infringer has taken all of the essential features or integers of the patentee's claim: see Rodi and Wienenberger AG. v. Henry Schowell Ltd., (1969) RPC 367, especially at pp 383-384."

The essential features of the invention are to be ascertained from the claims in the patent.
As the Full Court of the Federal Court said in Populin v. H.B. Nominees Pty Ltd (supra) at 43:

" The essential features of the product or process for which it claims a monopoly are to be determined not as a matter of abstract uninformed construction but by a common-sense assessment of what the words used convey in the context of the then-existing published knowledge. As Lord Diplock (with whom the other members of the House of Lords agreed) commented in Catnic Components Ltd. v. Hill and Smith Ltd.

(1981) FSR 60: '...a patent specification is a unilateral statement by the patentee in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. 'skilled in the art'), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called 'pith and marrow' of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge...' "

In order to determine the precise monopoly claimed by Mr Binder, it is necessary to construe the specification in his patent. The specification commences:

" The following statement is a full description of the invention including the best method of performing it known to us:

THIS INVENTION relates to an improved sugar cane planter. The main object of the invention is to provide a cane planter of the type which plants setts which have been pre-cut by a chopper harvester, for example, the planter being particularly compact and simple and economical to manufacture, though highly effective in operation. Accordingly, the invention resides broadly in a cane planter including: "

and there is then set out the matters which are later found in the first claim defining the patent.

There is then set out a preferred embodiment of the invention, which is described in detail with the aid of two figures, the first being a partly broken away side elevational view of a sugar cane planter according to the invention, and the second being a detailed and enlarged drawing of the throw-out mechanism of the elevator of the planter.
The Claims defining the invention are as follows:

" 1. A sugar cane planter including:

a wheel-mounted main frame,

means for connecting the main frame to a tractor, a drill plough mounted under the main frame, a wheel-mounted trailer frame pivotally connected about a transverse axis at its front to the main frame,

a fixed tank adapted to contain a quantity of treating liquid on the trailer frame, said tank including side walls and downwardly convergent front and rear walls which define a closed tank bottom, a hopper on the trailer frame adapted to carry a quantity of cane setts and to deliver them gravitationally into the tank, said hopper comprising a pair of fixed parallel sides and, between the sides, a bottom member hinged at its front to the back of the tank and a back member rigidly secured to the back of the bottom member, and means for raising the bottom and back members relative to said fixed sides and tank for ejecting cane setts from the hopper into the tank, an elevator extending into said tank to elevate setts from the tank and to discharge them above the main frame, said elevator including transverse channelled cleats on endless sprocket-mounted chains, each of said cleats being adapted to engage and elevate at least one sett, and means for ejecting from each of said ascending cleats any setts carried by said cleat in excess of one, and

a chute assembly on the main frame adapted to receive such discharged cane setts and feed them gravitationally to a furrow opened by the drill plough.

2. The planter as claimed in Claim 1 wherein said ejecting means comprises a pivoted throw-out member mounted adjacent the head of the elevator, and means for oscillating the throw-out member to move it sequentially over each ascending cleat to eject therefrom any sett in excess of one carried by the cleat.

3. A sugar cane planter as claimed in Claim 1 or Claim 2 wherein said elevator has three parallel endless sprocket-mounted chains and two series of said cleats in staggered arrangement, those of one series being mounted transversely on the middle and one side chain, those of the other series being mounted transversely on the middle and the other side chain, all of the cleats being in substantially equally spaced arrangement, and wherein a throw-out member is provided for each of said series of cleats.

4. The planter as claimed in any one of Claims 1 to 3 wherein the front and rear walls are inclined more steeply than said bottom member of said hopper, even when said bottom member is raised, said front and rear walls of said tank converging into a semi-cylindrical bottom wall into which the bottom of said elevator extends for conveying cane setts from said tank.

5. A sugar cane planter substantially as hereinbefore described with reference to the accompanying drawings."

I am unable to resolve with confidence much of the conflict between the accounts of Mr Vane and Mr Binder. Mr Binder's version was put to Mr Vane and strongly denied by him. Mr Vane's account was similarly the subject of cross-examination of Mr Binder, with a similar consequence. I am prepared to accept Mr Vane's assertion that he did not contact Mr Binder with the object of securing a licence to manufacture "H. B. M. billet planters".
I am satisfied however that there was in the Mackay area a problem with flattened cane and the consequent difficulty that problem posed for whole cane planters and that between the middle of 1989 and September of that year Mr Vane formed the intention of building a billet planter and obtained a copy of the Binder patent and had access to an "H. B. M. billet planter" in the course of his manufacture of the "Vane" planter. I accept Mr Vane's evidence that he did not obtain legal advice concerning the question of infringement and I accept his evidence further that he obtained the Binder patent particularly so as not to infringe. I think it more likely that Mr Binder got in touch with Mr Vane after hearing reports of the demonstration of the "Vane" planter, and that subsequent to that communication and probably in December of 1989 he inspected both the "Vane" planter and the H. B. M. machine located in the Vane workshop. While it is not crucial, I think it more likely that Mr Binder on the occasion of that visit communicated with Mr Vane that he would "think about the position" or "reserve his decision" concerning the question of whether or not the "Vane" planter infringed his patent, rather than forthrightly to assert infringement as Mr Binder says he did on the occasion of that visit.
There is much that is common in the philosophy behind the Vane machine and the Binder patent. Both seek to use mechanically harvested billets as plant cane. There are substantial similarities in respect of many aspects of the two machines but there are significant differences. The applicant claims that these are nothing more than mechanical equivalents.
I accept Mr Vane's evidence that his fundamental approach to the design of his planter was based on a different object from that which was the basis of the Binder planter. His passion and enthusiasm for his machine, and the reasons that prompted aspects of its design were almost palpable, and I have no doubt that he did not set out to copy the Binder invention, making in the course of taking the substance of that invention changes that were merely cosmetic variations or mechanical equivalents of aspects of Mr Binder's invention.
The changes from the matters referred to in the claims in the Binder patent were directed at, first, significantly reducing damage to the billets of cane and more particularly to the eyes on those billets and, secondly, by acknowledging that there was a considerably greater degree of damage in any event to billets that had been mechanically harvested compared with billets obtained from whole stick cane in whole cane planters, compensating for that extra damage by planting considerably more cane, that is to say, cane at a greater density per unit area than was achievable by the Binder invention.
Some design features of the Binder claims were specifically rejected because of either the contribution that those features made to the damage to the eyes of the billets or because they were not directed to achieving a minimum planting rate of at least 3 tonnes per acre, believed necessary by Mr Vane to achieve an effective strike rate. In addition, he wanted to obtain a speedier planting of approximately 11 to 12 kilometres per hour or better, and the desired effect was to have "at least three billets of cane planted at any one given time".
The differences then between the Vane machine and the matters contained in the claims of the Binder patent were functional and directed at achieving a different result from the invention described in the Binder patent in a number of significant respects. In my opinion the differences are not mere mechanical equivalents. Some items which in my opinion are essential integers of the claims in the Binder patent have not been taken in the Vane planter.
Claim 1 of the Binder patent includes a "hopper comprising a pair of fixed parallel sides and, between the sides, a bottom member hinged at its front to the back of the tank" and a "means for raising the bottom and back members relative to the said fixed sides in the tank for ejecting cane setts from the hopper into the tank." In respect of these aspects of the claim, the Vane machine uses a complete tipping bin with two mid-mounted hydraulic rams. The Binder machine has a single hydraulic ram, but the replacement of the single hydraulic ram on the Binder machine with two mid-hydraulic rams on the Vane machine is not a relevant consideration, having regard to the generality of the words "means for raising" in the claim. However, I am satisfied that the complete tipping bin causes less eye damage to the cane billets because the billets fall gravitationally from the top and that the lifting floor referred to in the Binder patent would cause some of the cane to be dragged up the side walls and, I infer, would cause some of the eyes of the billets to suffer damage. In the view I take of the matter, this aspect is not a mechanical equivalent nor has, in any relevant sense, the "pith and marrow" of the Binder invention been copied. I accept the evidence of Mr Chaseling, a mechanical engineering consultant, that this change introduced in the Vane machine represents a true improvement over the invention described in the Binder patent, as I do his other evidence.
The second substantial functional difference which I find exists between the Vane machine and the claims of the Binder patent is the use of the conveyor belt on the Vane machine as opposed to the chains and transverse cleats as described in the claims of the Binder patent. The conveyor belt has a complete moving floor, which means that the billet of cane rests on the floor as it is carried by that conveyor belt, as opposed to being dragged across the stationary floor by the transverse cleat in the chain and sprocket arrangement in the Binder patent. Because the belt conveyor does not drag billets across the stationary supporting surface, there is a reduction, in my view, in the likely damage to the eyes of the billets. This will also enhance the removal of dirt and leaf material because the belt will carry that material together with the billets, whereas the chain and cleat method would tend to collect the cane billet and leave the dirt and leaf material behind. This design variant in my opinion is no mere cosmetic change but represents a significant design improvement resulting in less damage to the cane billet and thereby improving the rate of germination of plant cane.
The third functional difference which I find between the Vane machine and the Binder patent is the absence of a throw-out member on the Vane machine. In the words of Claim 1, in the Vane machine there is no "means for ejecting from each of said ascending cleats any setts carried by said cleat in excess of one". The essentiality of the means for ejecting cane setts in excess of one is highlighted by the fact that it is referred to in each of the five claims of the specification. No claim has been made incorporating all the integers of Claim 1 except the means for ejecting setts in excess of one. In my opinion, the design philosophy as reflected in the Binder claim was to seek to achieve, in the context of mechanically harvested billets, a similar density and configuration of billets as had been obtained by whole stick planters. The aim, according to Mr Binder, was "a continuous row of billets. Not necessarily a double row but at least more than one after the other." Mr Binder agreed with a suggestion that "the whole object" of his invention "is to plant as close as possible to end to end overlapping, because of efficiency and economy".
The design philosophy of the Vane machine is quite different and seeks, by considerably overplanting when compared with the amount of billets planted by whole stick planters, to compensate for the increased damage to eyes when working with mechanically harvested billets rather than billets obtained from whole stick cane.
The omission of a throw-out mechanism is a deliberate design feature with functional consequences in the Vane machine, and I am satisfied that what is an essential integer of the claims in the Binder patent has not been taken in the Vane machine.
As Wilcox J. said in Rhone-Poulenc Agrochimie SA v. UIM Chemical Services Pty Ltd (1987) 75 ALR 601 at 611:

" I am not aware of any case in which, there being a number of clearly identified separate integers in the relevant patent, it has been held that an article which reproduces some only of those integers infringes the patent... (T)he pith and marrow doctrine has typically been applied in cases, of which Catnic, supra, is an example, where the alleged infringing article reproduces all integers but departs in a minor respect from description of one of them. The reason for this limited application of the doctrine is, no doubt, the point made by Lord Diplock in Catnic: the question of the application of the 'pith and marrow' principle "does not arise where the variant would in fact have a material effect upon the way the invention worked". The elimination of an integer may normally be expected to affect the way the invention worked. "

In my opinion there is nothing in the language in the Binder patent to suggest that the presence or absence of the ejecting member was optional or immaterial: quite the reverse.
The conclusion that I have reached that the design differences in the Vane machine from the Binder patent are not mere mechanical equivalents or variants but are changes with a significant, functional consequence is supported by two practical cane farmers who gave evidence. Mr Brian Butt, amongst other things, said that "(t)he use of the rubber conveyor belt, nylon flights and tipping bin hopper must be gentler on the cane billets", particularly when compared with "a cleat pulling the cane all the way up the elevator." Mr Joseph Gaviglio gave evidence which also reflected the aim of billet planting to minimise the damage to the eyes on the billet. He said he disengaged the "flipper device" on the H. B. M. machine so as to achieve a heavier density of planting (of 4 tonnes of cane to the acre) than would be achieved if the ejection mechanism were permitted to operate. This was done to avoid gaps in the germinated cane.

For these reasons the claim for infringement is dismissed.
Turning to the cross-claim for revocation, three grounds were advanced. Obviousness, based on s. 100(e) of the Patents Act 1952; absence of novelty, based on s. 100(g); and internal invalidity, based on ss. 40 and 100(c) of the Patents Act 1952.
As to obviousness, the test is whether the invention would have been obvious to a non-inventive worker in the trade equipped with the common general knowledge in that trade as at the priority date: The Wellcome Foundation Limited v. V R Laboratories (Aust) Proprietary Limited (1980-81) 148 CLR 262 at 270. On the same page Aickin J. makes it plain that the question is not whether it was or would have been obvious to the inventor or to some other particular worker in the field. In determining that question, the court is to consider the common general knowledge amongst those in the relevant trade at the priority date of the patent.
Information in prior specifications may not be taken into account unless it is proved that those specifications have become part of the common general knowledge in that trade at the relevant time. Aickin J. in Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Ltd (1979-80) 144 CLR 253 at 295 said:

" There was no evidence in the present case...that any of the specifications relied upon was part of the common general knowledge of those working in these fields in Australia. The respondent relied upon a number of prior specifications which had been available in Australia for public inspection before the priority date as providing a basis for the argument that the invention claim was obvious. For the reasons which I have set out above I do not regard such specifications as capable of sustaining that argument without evidence that they were part of common general knowledge at that time. There was no such evidence and accordingly it is not necessary for me to examine those specifications. "

There was no evidence that the prior specifications relied on in this case had become part of the common general knowledge in the trade at the relevant time and there was no other basis on which the question of obviousness was sought to be based. It follows then that this ground of invalidity fails.
I should say that, in any event, I am satisfied here that the invention in the Binder patent was not obvious, particularly having regard to a known need at the priority date and to the substantial commercial success that the Binder machine has enjoyed since its introduction into the market.
Mr James Adams, a patent attorney called on behalf of the applicant, said in evidence:

" ...in all the prior art - in all the prior machines, everyone has had to use two bins, two elevators, and Binder has shown that it is possible to do it with one bin and one elevator. "

That observation also has relevance to the ground of want of novelty.
The basic test for want of novelty is the "reverse infringement test". Mr Crowe, counsel for the respondent, conceded that the question of anticipation depended solely on the material contained in the specification of the Massey-Ferguson sugar cane planter, the subject of Letters Patent No. 501518.
The question is whether that alleged anticipation would, assuming the patent to be valid, constitute an infringement of the Binder patent. To put the question another way, does the anticipation reveal all the essential attributes of the patent?
There are two elevators and two hoppers in the Massey-Ferguson specification, and the reasoning of Connolly J. and of the Full Court in Populin v. H. B. Nominees Pty Ltd, earlier referred to, would, by parity of reasoning, lead to the conclusion that the Binder patent represents an advance over the two-part arrangement of the Massey-Ferguson specification.
I am satisfied that the alleged anticipation by the Massey-Ferguson patent does not reveal all the essential attributes of the Binder patent.
On the question of novelty, it is not irrelevant to note that on 17 March 1980 Mr Binder filed a corresponding patent application in the United States of America, which ultimately proceeded to grant as U.S. Patent No. 4,314,514 on 9 February 1982 and will expire on 9 February 1999. While it is not, of course, conclusive in the matter, there is, according to Mr Adams, a generally accepted view amongst patent attorneys that the requirements of the U.S. Patent Office are more stringent than the novelty requirements of the Australian Patent Office and that the obtaining of a U.S. patent is a strong indication that the invention is novel and not obvious from the prior art.
Finally, as to the claims based on s. 40, the sufficiency of description in a patent is a matter of degree. As Lindley L.J. said in Edison and Swan Electric Light Co. v. Holland (1889) 6 RPC 243 at 280:

" The Patentee is adding something to what was known before, and he does all that is necessary as regards the language he uses, if he makes the nature of his invention, and how to perform it, clear and intelligible to persons having a reasonably competent knowledge of what was known before on the subject to which his patent relates, and having reasonable competent skill in the practical mode of doing what was then known. "

This basis of attack on Mr Binder's patent rests on the (1idence of Mr John Pizzey, patent attorney and mechanical engineer. I found Mr Pizzey's evidence on these matters generally unhelpful, and argumentative.
It is said on behalf of the respondent that the specification does not fully describe the invention in three respects. First, it is said that of the cleats "being in equally spaced staggered arrangement" does not make it clear whether the cleats in each set have the same equal spacing one set compared to the other. The requirement that the two sets of cleats be "staggered" requires that the spacing on each set be the same, but arranged so that cleats on adjoining sets are not in line. Otherwise, since each set of cleats is driven at the same speed, the configuration would at times be staggered, and at other times be in line.
Secondly, it was said of that part of the specification "(t)he setts fall into the main chute 15, which is so shaped so that the setts, entering the top of chute more or less transversely, are caused to turn, in passing through the chute, so that they leave the bottom of the chute and enter the furrow in end to end disposition" is deficient in that how the chute is shaped so as to achieve an end to end ultimate disposition of the billets or setts is not explained.
Thirdly, it is submitted it is not described how the invention achieves the object specified in the specification. The specification reads "(t)he main object of the invention is to provide a cane planter of a type which plants setts which have been pre-cut by a chopper harvester; for example, the planter being particularly compact and simple and economical to manufacture though highly effective in operation. "
In my view there is no misdescription or inadequacy of description concerning the spacing of the cleats nor is there any failure concerning the description of the shape of the main chute which is defined by the desired result. I am satisfied that a man skilled in the art would be able to supply any deficiency or omission without the exercise of any inventive faculty: No-Fume Ld. v. Frank Pitchford and Co. Ld (1935) 52 RPC 231 at 243.
As to the third complaint, the proposed virtues of compactness and simplicity and economy of manufacture and effectiveness in operation, are amplified by what is set out in the body of the specifications and, in my view, the description is not reasonably capable of being misunderstood: see Welch Perrin and Company Proprietary Limited v. Worrel (1961) 106 CLR 588 at 610. As Dixon C.J., Kitto and Windeyer JJ. said:

" If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, that, of course, is an end to the matter. But this objection is not established by reading the specification in the abstract. It must be construed in the light of the common knowledge in the art before the priority date. "

The summary of the relevant rules of construction to be adopted in construing a specification are set out by Sheppard J. in Decor Corporation Pty Ltd v. Dart Industries Inc. (1988) 13 IPR 385 at 400.
Further, it is said that in three respects the claims are not clear and succinct and fairly based on the matter described in the specification. It is said that the "means for ejecting" in Claim 1 is not clear and succinct. It was submitted that the only fair basis provided for a meaning for the phrase "means for ejecting" is found at pp 6-7 of the specification and Figure 2. This, however, is a depiction of the preferred embodiment of the invention. I reject the suggestion that any claim having a wider scope than that depicted in the preferred embodiment is not fairly based on the matter described in the specification. The words "means for ejecting" are similar to many words conventionally found in patents specifications and the fact that the expression is broad and encompasses any number of particular means of ejecting does not mean that that aspect would be unclear or unintelligible to reasonably competent workers in the field.
A similar conclusion follows in respect of the complaint concerning the phrase "means for raising the bottom and back members relative to the said fixed sides and tank for ejecting cane setts from the hopper into the tank". In the context of the description of the invention the word "ejecting" refers to the moving or transfer from the hopper into the tank and would be so understood by a competent non-inventive worker in the field.
The third complaint concerns Claim 3 and its reference to "a throw-out member"; it is said there is no throw-out member referred to in Claims 1 and 2 to which reference is made in Claim 3. In fact, Claim 2 is a specification of a particular ejecting means, a narrowing of the more general reference in Claim 1 and is specified in Claim 2 to be "a pivoted throw-out member mounted adjacent to the head of the elevator".
In my view the claim is sufficiently clear and succinct, and the attack on the validity of the patent based on s. 40 of the Patents Act 1952 fails.
For the reasons I have expressed the cross-claim for revocation for invalidity should be dismissed.
In the result, the application for infringement is dismissed and the cross-claim for revocation based on the various grounds for invalidity of the patent also fails.
The majority of the hearing was concerned with the question of infringement. My present view in all the circumstances is that it would be a fair order if, rather than to order that the application be dismissed with costs and the cross-claim be dismissed with costs, I were to order that the applicant pay the respondent one half of the respondent's costs, to be taxed if not agreed. I will, however, hear the parties concerning that proposed order as to costs.

[1992] FCA 602

29 JULY 1992