E Street Enterprises Inc v CPS Housewares Pty Ltd
[1996] FCA 988
•19 JULY 1996
CATCHWORDS
PATENTS - alleged infringement of combination patent - infringer must have taken all "essential integers" of the relevant claim - existence of `vent groove' in patentee's product an "essential integer" of the claim - whether alteration from `vent groove' to `vent hole' is "immaterial" or represents "pith and substance" of claim - use of term `vent groove' represents "particular language" - no warrant for widening meaning of term - operation characteristics different - patent not infringed
Populin v H B Nominees Pty Ltd (1982) 41 ALR 471 Cons.
Radiation Limited v Galliers and Klaerr Pty Ltd (1938) 60 CLR 36 Foll.
Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Ltd (1980) 144 CLR 252 Cons.
Olin Corporation v Super Cartridge Co. Pty Ltd (1977) 180 CLR 236 Cons.
E STREET ENTERPRISES INC.(Appellant/Cross respondent) v CPS HOUSEWARES PTY LIMITED (Respondent/Cross appellant)
No. G860 of 1995
SHEPPARD, BEAUMONT AND SACKVILLE JJ.
SYDNEY
19 JULY 1996
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) No. G860 of 1995
)
GENERAL DIVISION )
ON APPEAL FROM A JUDGE OF THE FEDERAL COURT
OF AUSTRALIA
BETWEEN:E STREET ENTERPRISES INC
Appellant/Cross respondent
AND:CPS HOUSEWARES PTY LIMITED
Respondent/Cross appellant
CORAM: SHEPPARD, BEAUMONT AND SACKVILLE JJ.
PLACE: SYDNEY
DATE: 19 JULY 1996
MINUTES OF ORDER
THE COURT ORDERS:
Appeal and cross-appeal dismissed, with costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) No. G860 of 1995
)
GENERAL DIVISION )
ON APPEAL FROM A JUDGE OF THE FEDERAL COURT
OF AUSTRALIA
BETWEEN:E STREET ENTERPRISES INC
Appellant/Cross respondent
AND:CPS HOUSEWARES PTY LIMITED
Respondent/Cross appellant
CORAM: SHEPPARD, BEAUMONT AND SACKVILLE JJ.
DATE: 19 July 1996
REASONS FOR JUDGMENT
THE COURT
INTRODUCTION
This is an appeal by E Street Enterprises Inc. ("E Street") from an order of a Judge of the Court (Lockhart J.) dismissing its claim that CPS Housewares Pty Limited ("CPS") had infringed E Street's patent for an invention entitled "pump closure for carbonated beverage container". E Street claimed that CPS had infringed its patent by selling a pump closure for a carbonated beverage container known as "Fizz Keep".
In the proceedings, for its part, CPS cross-claimed for revocation of the patent. Lockhart J. also dismissed the cross-claim. Although a cross-appeal against that order was filed, CPS has now indicated that it does not wish to pursue the cross-appeal. Accordingly, the cross-appeal should be dismissed.
The patent in suit is a combination patent. His Honour described the invention as follows. It is a pump closure for carbonated beverage containers and, in particular, for a screw cap closure, having a pump to pressurize a beverage container with ambient air. The purpose of the invention is to reseal the container and maintain the contents under pressure until the container is opened again to dispense the beverage. Carbonated beverages typically contain dissolved carbon dioxide gas which will escape into the atmosphere unless the container is pressurized and sealed. The beverages turn flat in the absence of the dissolved carbon dioxide gas. The purpose of the closure is to reduce the loss of carbonation, and also of flavour, by sealing the beverage container after use.
Although there are five claims defining the invention, for present purposes reference need only be made to claim 1 which is as follows:
"1.A pressurizing and closure assembly for use in combination with a carbonated beverage container comprising:
a closure cap having a central opening;
a pump having a pump housing attached to said closure cap, said pump housing having a cylindrical bore aligned with said central opening and a piston mounted for reciprocal movement through said bore, said piston having a reduced diameter portion and a
vent groove formed on said reduced diameter portion; [Emphasis added]a seal mounted on said reduced diameter piston portion for axial displacement from a first position to a second position along said reduced diameter portion, said seal defining the boundary of a compression chamber within said bore on one side of the seal, and an air supply annulus being defined between the piston and the pump cylinder bore on the other side of the seal, said seal having a resilient, annular shoulder engaging said piston bore and said piston and sealing the air supply annulus with respect to said vent groove when said seal is in the first position, and said seal being movable to the second position on said reduced diameter piston portion wherein said vent groove is in communication with the air supply annulus and the compression chamber; [emphasis added] and,
a check valve coupled to said pump housing in communication with said compression chamber, said check valve having a discharge port in communication with said compression chamber and a movable valve element for covering and uncovering the discharge port."
The various features of this claim were analysed in the expert evidence in the following terms, as cited by his Honour:
"CLAIM 1
Feature
(a)
A pressurizing and closure assembly for use in combination with a carbonated beverage container comprising:
(b)
a closure cap having a central opening;
(c)
a pump having a pump housing attached to said closure cap;
(d)
said pump housing having a cylindrical bore aligned with said central opening and a piston mounted for reciprocal movement through said bore;
(e)
said piston having a reduced diameter portion; and
(f)
a vent groove formed on said reduced diameter portion; [Emphasis added]
(g)
a seal mounted on said reduced diameter piston portion for axial displacement from a first position to a second position along said reduced diameter portion;
(h)
said seal defining the boundary of a compression chamber within said bore on one side of the seal; and
(i)
an air supply annulus being defined between the piston and the pump cylinder bore on the other side of the seal;
(j)
said seal having a resilient, annular shoulder engaging said piston bore and said piston and sealing the air supply annulus with respect to said vent groove when said seal is in the first position; and
(k)
said seal being movable to the second position on said reduced diameter piston portion wherein said vent groove is in communication with the air supply annulus and the compression chamber; and
(l)
a check valve coupled to said pump housing in communication with said compression chamber;
(m)
said check valve having a discharge port in communication with said compression chamber and a movable valve element for covering and uncovering the discharge port."
Feature (f), emphasised above, was central to the dispute.
At the trial, Dr. Stark, an expert called by E
Street, gave opinion evidence which was relevantly summarised by the learned primary Judge as follows. The purpose of the vent groove formed on the reduced diameter portion of the closure is to provide an aperture through which air can pass into the compression chamber when the seal slides to the distal end of the reduced diameter section of the piston on the up-stroke. The same function is achieved by CPS by the intersecting hole arrangement of the pump cap on the Fizz Keep closure which is similarly lockable by the seal. The two arrangements, that is, the arrangement of the vent groove in claim 1, and the arrangement on the Fizz Keep, were described by Dr. Stark as "simple mechanical equivalents".
THE REASONING AT FIRST INSTANCE
The primary Judge said that to establish infringement of a combination patent it was necessary that the infringer take each and every one of the "essential integers" of the relevant claims. His Honour cited the following well-known observations of Bowen C.J., Deane and Ellicott JJ. in Populin v H B Nominees Pty Ltd (1982) 41 ALR 471 (at 475) that -
"... if, on its true construction, the claim in a patent claims a particular combination of integers and the alleged infringer ... omits one of them he will escape liability".
In the present case, Lockhart J. considered whether this principle applied to the circumstances of the present case, saying:
"Claim 1 ... requires `a vent groove formed on said reduced diameter portion' of the piston (feature (f) ...). It is accepted by E Street that the presence of the `vent groove' is an essential integer.
In my opinion the words `a vent groove formed on said reduced diameter portion' of the piston have a clear meaning. They are not apt to describe a hole bored through the reduced diameter portion of the CPS product. That product has an intersecting hole arrangement at the reduced diameter portion as the means for communication of air from the air supply annulus, between the piston and the bore, to the compression chamber."
His Honour continued as follows:
"The `groove' in the present context means a form of channel cut by artificial means in the substance from which the piston is made. The words of Claim 1 `a vent groove formed on said reduced diameter portion' of the piston are not apt to describe the hole in the CPS product which is bored through the material. The hole in the CPS product is not `formed on' the reduced diameter portion of the piston; it `goes into it', to use the words of Dr Stark in cross-examination. Thus in my view a hole is not a `vent groove'. Even if it were, it would not be apt to describe the hole in the CPS product as being `formed on' the reduced diameter portion. The phrase `a vent groove formed on said reduced diameter portion' must be read as a whole; and on its proper construction it does not encompass an intersecting hole arrangement at the reduced diameter portion of the CPS product."
In Radiation Limited v Galliers and Klaerr Pty. Ltd. (1938) 60 CLR 36, Dixon J. said (at 51) that the question on an alleged infringement is not "whether the words of the claim can be applied with verbal accuracy or felicity" to the thing said 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". In Populin, Bowen CJ., Deane and Ellicott JJ. quoted this passage and added (at 475) that a defendant "will not escape infringement by adopting what are immaterial variations ... by omitting an inessential part or step and substituting another part or step as its equivalent".
Lockhart J. referred to this familiar line of authority, but distinguished it on the facts, saying:
"However, in this case the CPS product has not adopted an immaterial variation. There is, it seems to me an essential difference between `a vent groove formed on said reduced diameter portion of the piston' and a hole bored through the reduced diameter portion of the CPS product.
In drafting Claim 1 the words in feature (f) have been chosen carefully, intending to refer precisely to what the feature says, namely, `a vent groove'. There were many other expressions that could have been used if the person who drafted the claim had chosen to do so. Furthermore, the words in feature (f) are clear in meaning. This is not a case where it is necessary to turn to the specification as an aid to the construction of the expression `vent groove' or `vent groove formed on said reduced diameter portion' as there is no ambiguity in that expression. In any event, as mentioned earlier, the words used in the body of the specification to describe the same function, namely, `shallow groove', `inlet port' and `vent passage' are indicative of the function which the `vent groove' is to perform. They do not assist the construction of feature (f) for which E Street contends. It is likely that the person who drafted the specification was aware of the prior art and common knowledge, carefully chose the words in feature (f), and was astute to avoid an unduly wide claim... .
It follows that CPS has not taken feature (f) in Claim 1. This is an essential integer of the patent in suit. There has been no infringement of Claim 1."
E STREET'S CONTENTIONS ON THE APPEAL
E Street accepted that the presence of the "vent groove" was an essential integer of the claim. However, Mr. Ireland Q.C., on behalf of E Street, made the following submissions: (1) its case on infringement depended on whether (on the one hand) the adoption by CPS of a vent hole was a departure "in a minor respect", so that the "pith and substance" of the claim was taken, or whether (on the other hand) the alteration from a vent groove to a vent hole was "sufficiently significant" to "avoid" infringement; (2) it should be accepted that "the substitution" by CPS of a vent hole for the vent groove stipulated by the claim (a) had "no material effect" upon the way the invention, as claimed, worked; and (b) possessed "the same advantages" as the vent groove; (3) the true principle, as stated by Aickin J. in Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited (1980) 144 CLR 253 (at 286), is that a defendant "may not take the substance of an invention unless the wording of the claims makes it clear that the relevant area has been deliberately left outside the claim"; and (4) the primary Judge should not have concluded that the patentee had deliberately left outside the claim the possibility that a vent hole would perform the function of an inlet port or vent passage for the purpose of the pump's operation.
It was further contended for E Street in its written submission that if the argument in (4) above were accepted, it
would follow that CPS took the pith and substance of the invention, and the variation "introduced" by CPS should be regarded as a "minor departure" from the description in the claim, so that infringement was established.
In his oral argument, Mr. Ireland Q.C. submitted that his Honour failed properly to appreciate how the invention worked and that the essence of the invention was the vent, not a vent groove or hole. Thus, so the submission ran, what was required was an opening through which air would pass. Upon that approach, claim 1 of the specification was to be construed as if the relevant words of feature (f) said "a vent groove or other aperture" or, perhaps, "or hole or other aperture".
CONCLUSIONS ON THE APPEAL
The relevant legal principles are well defined in the authorities previously mentioned. In the Radiation Case, Dixon J. went on to say, (at 52):
"Sometimes a claim, particularly a claim for a combination, is expressly confined to a particular form of construction or the like, and in such a case it is useless for the patentee to complain that his idea of what he calls his principle has been applied in a different construction or has been expressed by means of a mechanical equivalent of some element which his claims make of the essence of his monopoly. ... But the words of James L.J. in Clark v Adie (1875) LR 10 Ch App 667 at 675 must not be forgotten: `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.'"
(Emphasis added)
In Olin Corporation v Super Cartridge Co. Pty Ltd (1977) 180 CLR 236, Gibbs J. said this (at 246) with reference to the observations of Dixon J. in the Radiation Case at 51-2 previously cited:
"The statements in these passages are still good law... . However, ... the principle that there may be infringement by taking the `pith and marrow' or the substance of an 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... ."
In Minnesota Mining, Aickin J. said (at 286):
"Notwithstanding the undoubted fact that the doctrine of Clark v Adie... concerning the taking of the pith and substance of an invention, but nonetheless staying outside the express words of the claim, is less often applicable at the present time than it was at the time of that decision, it remains the law that a defendant may not take the substance of an invention unless the wording of the claims makes it clear that the relevant area has been deliberately left outside the claim.
The authorities which demonstrate this to be so are collected in the judgment of Gibbs J. in Olin Corporation v Super Cartridge Co. Pty. Ltd. ... ."
See also Leonardis v Sartas No. 1 Pty Limited, Full Federal Court, unreported, 13 June 1996 at 44.
In our view, the question whether the "variation" was "immaterial" was (as James L.J. observed in the passage in Clark v Adie mentioned above) one of fact for Lockhart J. to determine. His Honour correctly identified this as the issue for resolution. It follows that the real matter to be considered on the appeal is whether the primary Judge erred in his conclusion that the "variation" was not "immaterial". In undertaking this task, his Honour had the advantage of hearing and seeing the expert witnesses.
Lockhart J. said that, on the issue of infringement, he accepted each expert's evidence in part. The opinion evidence of Dr. Stark, that the parties' respective arrangements were "simple mechanical equivalents" has already been mentioned. But Mr. McCaffrey, a senior engineer who was called by CPS, expressed the contrary view, saying that the arrangements in the E Street inventions and in the CPS product are not "mechanical equivalents". In his opinion, the effectiveness of the seal mechanism depends, inter alia, on the shape of the area available for the air flow. The CPS product is a more effective design with respect to an air flow because of the regular shaped duct and a larger flow area. The air flow characteristics of the E Street patent invention and the CPS product are different. In the case of the CPS product the air flow from the open chamber to the sealed chamber occurrs by means of an intersecting hole arrangement and takes place internally through the piston stem. In this
arrangement, there is a communication port consisting of a circular hole in the centre of the piston stem, adjoined at 90 degrees to a circular hole of a similar size. It cannot be classified as a groove in the E Street sense. In the case of E Street's patent, the air flow is between the floating seal and the reduced diameter portion of the piston, via the vent groove formed in the outer surface of that portion. According to Mr McCaffrey, the respective arrangements are not "mechanical equivalents" in terms of their physical location, their shapes and their air flow characteristics.
It was open to his Honour to take account of Mr. McCaffrey's evidence in concluding that CPS had not merely adopted an "immaterial variation" from E Street's patent. We are not persuaded that any substantial ground has been made out for an appellate tribunal to disturb such a finding.
Moreover, Lockhart J. was correct to decide the case on the basis of the proper construction of the words used in claim l. In our view, the draftsman of the specification chose his words carefully. A "vent groove formed on" the piston is particular language. There is no warrant apparent on the face of the draftsman's language for widening it so as to embrace another form of aperture such as a hole.
Further, it will be recalled that the essential feature (f) in question was not merely "a vent groove", let
alone "a vent", it was "a vent groove formed on ... [the] portion of the piston". (Our emphasis.) As Lockhart J. said, "[t]here is ... an essential difference between `a vent groove formed on ... portion of the piston' and a hole bored through the reduced diameter portion of the CPS product". We agree.
In our view, the primary Judge addressed the proper questions to be considered on the issue of infringement and decided those questions correctly. Accordingly, the appeal must also be dismissed.
ORDERS
The appeal and the cross-appeal are both dismissed, in each instance with costs.
I certify that this and the preceding twelve (12) pages are a true copy of the Reasons for Judgment herein of the Court.
Associate
Dated: 19 July 1996
Counsel and Solicitors Mr. J.M. Ireland Q.C.
for Appellant/Cross instructed by Cutler Hughes
respondent: & Harris
Counsel and Solicitors Mr. D.M. Yates instructed
for Respondent/Cross by Blake Dawson Waldron
appellant:
Date of hearing: 21 May 1996
Date Judgment delivered: 19 July 1996
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