Dabscheck v Hecla Electrics Pty Ltd

[1936] HCA 49

57 CLR 418

DABSCHECK

HECLA ELECTRICS PROPRIETARY LIMITED RESPONDENT. Patent-Specification-Several claims-Invalidity of one claim-Validity of other

claims unaffected--Patents Act 1903-1935 (No. 21 of 1903-No. 16 of 1935), MELBOURNE, Sept. 21-23;

Sec. 61 of the Patents Act 1903-1935, which provides that "where the com. plete specification contains two or more claims in respect of the invention the invalidity of any one claim shall not affect the validity of any other claim or the validity of the patent SO far as it relates to any valid claim," enables the court to revoke letters patent as to claims that are bad, and to allow claims that are good, or are not attacked, to stand.

PETITION to revoke letters patent.

The petitioner, Woolf Dabscheck, sought the revocation of letters patent dated 26th July 1932 granted to the respondent, Hecla Electrics Pty. Ltd., on the grounds (a) that the patent was obtained by the respondent in fraud of his rights, and (b) that the petitioner was the true inventor.

The facts and arguments sufficiently appear in the judgment hereunder.

Ashkanasy, for the petitioner. Dean and O'Bryan, for the respondent.

57 CLR 419

STARKE J. delivered the following written judgment Petition seeking the revocation of letters patent dated 26th July 1932, No. 8436 of 1932, granted to the respondent, Hecla Electrics Pty. Ltd. The invention relates to improvements in plugs or connecting means for placing electrical appliances into an electric circuit. In the use of these appliances, an escape of the electrical current was not uncommon, and persons using them were subject to electrical shocks, more or less severe. The main purpose of the invention was to protect users of such appliances from injury. The general nature of the invention is stated in the specification it is an electrical device or plug or connecting means with enclosed contacts connected to the current supply wires and a spring contact secured to a shroud or guard surrounding the current supply terminals in the appliance, connected to contact plates on the plug by means of bolts or screws and to an earthing wire. By these means, any current escaping in the use of the electrical appliance was gathered up and discharged to earth. The petitioner alleges that he was the first and actual inventor of the invention the subject matter of the letters patent granted to the respondent, that the letters patent were obtained in fraud of his rights, and that the invention the subject of the letters patent was not novel and was published before the date of the application for the same.

The petitioner, who is of Russian nationality, was the managing director of a limited company known as Wembley Modes Pty. Ltd. which used electric irons in the course of its business as a manufac- turer of mantles, frocks, &. He took some interest in electrical appliances, and in 1929 and 1930 obtained letters patent for improvements in and relating to them. In the year 1931 he made what he regarded as a great improvement in plugs or connecting means for placing electrical appliances such as electric irons into an electric circuit an electric iron exhibits a model of this improve- ment, which, but for some minor details which I shall mention later, has the same elements, and functions in the same manner, as the connecting means in the letters patent granted to the respondent. It is a plug or connecting means with enclosed contacts connecting to the current supply wires, and a spring contact secured to a

57 CLR 420

shroud or guard surrounding the current supply terminals in the

appliance connected to a contact plate or shield surrounding the plug by screws, and to an earthing wire. About the same time, the petitioner made a plug with a spring contact mounted on the exterior thereof. He applied for letters patent in respect of these devices, and lodged provisional specifications. About July 1931 he submitted the devices to the State Electricity Commission, whose electric inspector advised him in writing as to their suitability for establishing an earth connection. About 1931, he used the plug with the spring contact attached to the shroud or guard in the business of Wembley Modes Pty. Ltd. A presser used the plug in an electric iron for some months in that business openly and without being restricted in any way as to its disclosure. He also, about the year 1931, showed and explained the plug to an engineer in the employ of A. M. Cook &Co. Ltd., which dealt in electrical appliances, and endeavoured to induce that company to take and deal in his device, but without success. He also, about July of 1931, showed and explained his device to the respondent's governing director, who told him it was no good and that he was wasting his time on it.

The petitioner has satisfied me that he publicly used and displayed the device or plug before the date of the letters patent granted to the respondent, and was "the first and actual inventor thereof." But he has also charged the respondent with fraud in obtaining its letters patent. He swears that he showed his device to its governing director-who, however, emphatically denies the statement. The petitioner and the governing director both gave evidence before me, and I had no fault to find with the demeanour of either of them in the witness box. Neither, I am satisfied, was conscious of stating that which he knew was untrue. But I think the governing director was mistaken in denying that he ever saw the petitioner device before the grant of letters patent to his company. He is. of course, a skilled and experienced man in his business, and I think he regarded the petitioner as out of his depth in connection with electrical appliances, got rid of him as quickly and as politely as he could, and forgot all about both him and his device. Soon after- wards, the respondent's governing director went abroad, and on

57 CLR 421

his return proceeded to fashion the device which is now the subject of the letters patent in the name of Hecla Electrics Pty. Ltd. It is, I think, possible, perhaps probable-though I am not sure- that the petitioner's device originated in the governing director's mind the device for which letters patent were subsequently obtained by his company, but I am satisfied that he did not consciously revert to the petitioner's device when fashioning his own, and, indeed, that he believes that he never saw it, though in fact he did see it and has forgotten the fact. I have not overlooked his evidence that he would not have forgotten the petitioner's device if he had ever seen it, but that is not an uncommon type of assertion when a man's memory is at fault. An allegation in a petition, however, that a patent was obtained in fraud of the petitioner's rights implies some dishonest action a mistake honestly made does not establish fraud (See Re Avery's Patent 1; In the Matter of Ralston's Patent 2 ). Nevertheless, as I have already indicated, the facts proved in this case establish to my satisfaction that the petitioner was the originator of the plug or connecting device shown in exhibit A and exhibit Al he invented the device and first disclosed it to the public (See Frost, Patent Law and Practice, 4th ed. (1912), pp. 15 et seq.). Hecla Electrics Pty. Ltd. and its governing director were not its first and actual inventors.

Claims 1, 3, 4 and 5 admittedly include the device of the petitioner and cannot be supported.

In these circumstances, no question arises as to the locus of the petitioner to present his petition without the authority of the Attorney-General (Patents Act 1903-1935, sec. 86 (4) (d) ).

At common law, the invalidity of any claim would avoid the patent and afford good ground for its revocation (Morgan v. Seaward 3 ). But now sec. 61 of the Patents Act 1903-1935 provides:

Where the complete specification contains two or more claims in respect of the invention the invalidity of any one claim shall not affect the validity of any other claim or the validity of the patent

SO far as it relates to any valid claim."

1(1887) 4 R.P.C. 322. 2(1909) 26 R.P.C. 313, at pp. 318, 319. 3(1837) 1 Web. Pat. Cas. 187. 57 CLR 422

This provision enables the court, as I have said in the cases of In re Rainsford's Patent; Ex parte J. Fielding &Co. Ltd.* and Paper Sacks Ltd. v. Cowper (both unreported on this point). to revoke letters patent as to claims that are bad, and to allow claims that are good, or are not attacked, to stand.

The petitioner has not alleged a general want of subject matter in the claims of the respondent, but has confined himself to allegations that he was the first and actual inventor of the invention the subject matter of the letters patent granted to the respondent, that the letters patent were obtained in fraud of his rights, and that the invention the

In this case His Honour said :------

claim," satisfy me that the protection One of the conditions of a grant is

of the section operates after the grant that letters patent are void if the inven-

of letters patent, and must, there. tion is not a new invention (See Patents

fore, extend to infringement or revoca Act 1903-1921, First Schedule). And,

tion proceedings. This final phrase of under English law, if a patent were

sec. 61 may be compared with the granted for two or more inventions

words occurring in sec. 60, or when one was not new. the patent was

affect the validity of the patent when void, because the consideration for the

granted." Moreover, Revocations of grant was the novelty of all, and, the

Patents' forms Division 7 of Part IV., consideration failing, the Crown was

Procedure." Can letters patent, then, deceived in its grant (Morgan V.

be revoked, which contain some claims Seaward, (1837) 2 M. &W. 544 1 Web.

that are invalid, and some that are Pat. Cas. 187). A patent now is granted

valid, or are not attacked ? "Letters for one invention only, " but may

patent" is the name given to the docu- contain more than one claim, but it

ment conferring a monopoly of trade shall not be competent for any person

or manufacture upon the subject. in an action or other proceeding to take

The revocation of a patent involves any objection to a patent on the ground

not only the cancellation of this docu- that it comprises more than one inven-

ment, but also the annulment of the tion (Patents Act, secs. 33, 65 English

rights thereby granted (Cf. Bynner V. Patents and Designs Act 1907, sec. 14

The Queen, (1846) 9 Q.B. 523 115 (2)). But I apprehend that under the

E.R. 1373; R. v. Eastern Archipelago English law if a patentee lays claim to

Co., (1854) 4 DeG.M. &G. 199: 43 something that is not new, the letters

E.R. 483). The effect of sec. 61 is that patent are void, because, as before, the

the letters patent may be valid as to one consideration for the grant is the novelty

or more claims, but invalid as to others. of all that is claimed, and, the considera-

The provision has some analogy in the tion failing, the Crown is deceived

American law (See Walker on Patents, (Wilson Brothers Bobbin Co. Ltd. V.

5th ed. (1917), p. 226, par. 177, p. Wilson &Co, (Barnsley) Ltd., (1903)

279, pars. 210 et seq.). The office 20 R.P.C. 1. at p. 19 Murchland V.

of a claim is 'to define and limit with Nicholson and Gray, (1893) 10 R.P.C.

precision what it is that is claimed to 417; Deeley v. Perkes, (1896) A.C.

have been invented," and hence the 496). The Commonwealth Patents Act,

various claims particularize the inven sec. 61, however, provides

tion-they form distinct entities of Honour read the section, and pro-

invention. Therefore I see no reason, ceeded: The section is placed under

since the enactment of sec. 61, why a Part IV., "Procedure," Division 2,

patent should not be revoked as to Opposition," which suggests that

claims that are bad and allowed to the section is confined in operation to

stand as to claims that are good or the procedural steps leading up to the

are not attacked. The letters patent granting of a patent, and therefore

-the document-cannot in such a case affords no protection in infringement

be cancelled or destroyed, but various or revocation proceedings. But the

rights and privileges granted thereby final words, or the validity of the

may be annulled and vacated by patent SO far as it relates to any valid

judgment in revocation proceedings.

57 CLR 423

57 C.L.R.]

OF AUSTRALIA. subject of the letters patent was not novel and was published before the date of the letters patent by reason of the publication of the petitioner's device. The respondent now insists that many of his claims contain combinations that are new, and substantially different and far outside and removed from the petitioner's device. These combinations introduce what I have called minor details into the general nature of the invention. Claim 2 differs from the petitioner's device in that means are claimed in combination with other elements for connecting a coiled guard on the plug to an earthing wire as well as the external contact plate. But that, I think, is covered by the objection that this claim is not novel and was published before the date of the letters patent by reason of the publication of the peti- tioner's device. It merely adapts the petitioner's device to the coiled guard in a manner analogous to the means used by the petitioner for the same purpose. It is, no doubt, advisable SO to connect the guard, but the addition does not constitute a new combination.

Claim 2 therefore falls; and claims 9, 14 and 15 fall with it. [His Honour then considered claims 6-19 and concluded :-] The result is that the letters patent must be revoked as to the invention claimed in clauses 1 to 9 both inclusive, 13 to 17 both inclusive, and 19.

The petitioner made a charge of fraud, and though it has failed, the circumstances are SO exceptional that he should have his costs of the petition.

Order that letters patent No. 8436 of 1932 granted

to Hecla Electrics Pty. Ltd. be revoked as to claims 1-9, 13-17 and 19. Solicitors for the petitioner, Norris &Norris. Solicitors for the respondent, Whiting &Byrne.