Drew, Robinson and Co v Shearer - [1914] HCA 35

DREW, ROBINSON &CO.

SHEARER AND ANOTHER

RESPONDENTS. PLAINTIFFS,

ON APPEAL FROM THE SUPREME COURT OF Patent-Specification-Construction-Infringement-Essential element of invention

Where a patentee by his specification claims a particular element as being essential to his invention, there is no infringement of his patent if that element is not used by the alleged infringer.

The claim in a specification claimed a ploughshare having a flange turned inwards and attached to it a tongue turned upwards.

Held, that the tongue was an essential part of the claim, and, therefore, that a ploughshare having a flange turned inwards and no tongue was not an infringement.

Decision of the Supreme Court of Western Australia (McMillan A.C.J.)

APPEAL from the Supreme Court of Western Australia.

John Shearer and David Shearer, who were the patentees and registered owners of letters patent for Western Australia for an invention called an " "improved share and footpiece for ploughs and other cultivating implements," brought an action in the Supreme Court for infringement against Drew, Robinson &Co. claiming an injunction restraining the defendants, their servants and agents, from selling, offering for sale or in any manner deal- ing with any shares or footpieces constructed in infringement of the plaintiffs' letters patent; damages or an account of profits; delivery up or destruction of all articles in the defendants' pos- session constructed in infringement of the letters patent; and

18 CLR 210

such further or other relief as the circumstances of the case might

By their defence the defendants denied infringement, and said that the letters patent were null and void on the grounds that the invention was not the proper subject matter for a patent; that it was not useful; that it was not new; that it was published prior to the date of the letters patent in Knight's Dictionary of Mechanics, vol. II., p. 1748; that it was used in Western Australia prior to the issue of the letters patent by the use of certain ploughshares known as "Ransom's Y.O.H." and

Y.F.L.", "Howard's B.", "Oliver's", "Hornsby's R." and Clarence H. Smith's P.C.H.S."; and that in the specification the plaintiffs had not sufficiently distinguished between the things which they claimed to have invented and those which they did not claim and admitted to be old.

The specification of the patent was as follows:-

Hitherto it has been found difficult to make stump jump and other ploughs requiring great strength on the paring or digging system, as a stem or body of the size and shape necessary was too light and too narrow to permit of the attachment of a share and mouldboard or breast of suitable shape.

"This invention is designed to supply with the footpiece described a share which shall be strong and readily applicable to paring and other ploughs and cultivating implements and adapted to varying soils and conditions. The share may be cast or made by stamping or forging iron or steel. In conjunction with the share we employ a specially designed footpiece of novel construction…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1914] HCA 35
Decision Date: 29 May 1914

CaseChat Overview and Summary

Drew, Robinson & Co. (appellants) appealed to the High Court of Australia from a decision of the Supreme Court of Western Australia, which had found them liable for infringing letters patent held by John Shearer and David Shearer (respondents) for an improved ploughshare and footpiece. The respondents sought an injunction, damages, and other relief. The appellants denied infringement and also challenged the validity of the patent on several grounds, including lack of novelty and prior publication.

The central legal issue before the High Court was the construction of the patent claims, specifically claims 2 and 3, and whether the appellants' ploughshares infringed these claims. This involved determining whether the "tongue" described in the patent specification was an essential element of the invention claimed. The appellants argued that their ploughshares, which featured a flange but lacked the upwardly projecting tongue, did not infringe because the tongue was an essential part of the patented invention. The respondents contended that the tongue was not an essential feature and that their patent should be construed broadly to cover their invention.

The High Court, in allowing the appeal, reasoned that the patentee, by their specification, had clearly defined the "tongue" as an essential element of the invention. The Court applied the principle that a patentee delimits the area of their monopoly through their claims, and if an element is described as essential, there can be no infringement if that element is not used by the alleged infringer. The Court found that the appellants' ploughshares possessed the flange but lacked the upwardly projecting tongue, which was considered the substance of the invention. Therefore, as the appellants had not used this essential element, they had not infringed the patent.

Consequently, the High Court allowed the appeal, setting aside the judgment of the Supreme Court of Western Australia. The Court found that the appellants had not infringed claims 2 and 3 of the patent because they had not incorporated the essential "tongue" feature of the patented ploughshare.

Orders