Interact Machine Tools (NSW) Pty Ltd v Yamazaki Mazak Corporation

[1993] FCA 491

INTERACT MACHINE TOOLS (NSW) PTY LIMITED; I.M.T. INTERNATIONAL MACHINE TOOLS
PTY LIMITED and NAKAMURA-TOME PRECISION INDUSTRY CO. LIMITED v. YAMAZAKI MAZAK
CORPORATION
No. NG657 of 1991
FED No. 491
Number of pages - 18
Patents
(1993) AIPC 91-026
(1993) 27 IPR 83

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Black CJ(1), Lockhart(2) and Wilcox(3) JJ

CATCHWORDS

Patents - Machine tool comprising a combination of integers - whether infringement of petty patents - whether petty patents invalid - whether petty patents are fairly based on the body of the patents and on the complete specification and on Japanese specifications - Re Mond Nickel Co Limited's Application (1956) RPC 189 discussed.

Patents Act 1952

Patents Act 1990

HEARING

SYDNEY, 25-27 May 1992

#DATE 23:7:1993

Counsel for the Appellants: A Chernov QC and B Caine

Solicitors for the Appellants: Davies Ryan De Boos

Counsel for the Respondent: J Emmerson QC and

D Catterns

Solicitors for the Respondent: Freehill Hollingdale and Page

ORDER

The court orders that:

1. The appeal be allowed.

2. The orders and declarations made by the primary Judge be set aside.

3. It be declared that each of the petty patents, numbered 601140 and 601669, is invalid.

4. Each of the said petty patents be revoked.

5. The application be dismissed.

6. The respondent pay the costs of the appellants of the proceeding at first instance and of this appeal.

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

JUDGE1

BLACK CJ I have had the advantage of reading the reasons for judgment of Lockhart J and of Wilcox J and I agree that the appeal should be allowed for the reasons given by their Honours. I agree with the orders proposed by Lockhart J.

JUDGE2

LOCKHART J This is an appeal, by leave, from the interlocutory judgment of a Judge of the Court (Gummow J) in which his Honour found that each of the three appellants had infringed two petty patents. His Honour made declarations in respect of the infringements and stood over the question of further relief to a later date. Hence, the interlocutory nature of the judgment.

1. The appeal raises questions of construction of the claims in the patents and of fair basing. At first instance, further issues were determined by the learned primary Judge, but they do not arise in the appeal.

2. The proceeding was brought by the respondent, Yamazaki Mazak Corporation ("Yamazaki"), against each of the appellants alleging patent infringement. The appellants cross-claimed asserting invalidity. The ultimate issues at the trial were whether there was infringement during the twelve month terms of the petty patents and whether they were invalid.

3. One of the two petty patents, No. 601140 ("140"), was sealed on 16 July 1990 for a term of twelve months commencing on that day. The other petty patent, No. 601669 ("669"), was sealed on 30 July 1990 for a term of twelve months commencing on that day. The twelve months term of each petty patent expired before the commencement of the proceeding. Applications for extension of the terms of the petty patents were lodged at the Patent Office before the relevant expiry dates of the initial terms, and the Commissioner determined that extensions should be granted.

4. The petty patents are in respect of inventions relating to complex machine tools having two mutually opposed workpiece spindles on a common axis, and provided with a tool rest associated with each workpiece spindle. The claim in each petty patent is for a machine tool comprising a combination of integers.

5. It is agreed between the parties that the relevant legislation is the Patents Act 1952 ("the Act"), not the Patents Act 1990 ("the 1990 Act"), as this proceeding had commenced under the Act and had not been finally dealt with or determined before the commencement of the 1990 Act.

6. I.M.T. International Machine Tools Pty Limited ("I.M.T.), the second appellant, admitted that during the terms of the petty patents it sold a machine tool manufactured by the third appellant, Nakamura-Tome Precision Industry Co. Limited ("Nakamura"). Interact Machine Tools (NSW) Pty Limited ("Interact"), the first appellant, admitted that it attempted to sell the machine to customers during the term of each of the petty patents. Interact and I.M.T. asserted that neither petty patent claimed a machine tool with one spindle stock which is fixed. The Nakamura machine does have this characteristic. Hence, it was submitted that there was no infringement.

7. The second question is whether the claims in the petty patents are fairly based on:
   

(1) the body of the petty patents themselves;

(2) the complete specification for a standard patent ("the complete specification") from which they are derived; and

(3) the convention priority documents, being certain Japanese patent specifications ("the Japanese specifications").

The question whether the claims of the petty patents are fairly based on the body of those patents arises from s. 40(2) of the Act which provides that the claim defining the invention in a petty patent specification shall be "fairly based on the matter described in the specification". The question whether those claims are fairly based on the complete specification and the Japanese specifications arises from a combination of ss. 45, 45A, 51, 141 and 142 of the Act.

1. There are fifteen basic applications for patent within the meaning of s. 141 of the Act which were made by Yamazaki in Japan on various dates between 28 April and 24 December 1987. These fifteen applications became collectively exhibits 3A to 3O. The application date for exhibits 3A to 3E inclusive was 28 April 1987. The application date for exhibits 3F and 3G was 29 May 1987. Those seven basic application (exhibits 3A to 3G) were treated by the parties as the crucial convention priority documents.

2. The importance to Yamazaki of establishing one or other of these priority dates lies in the publication on 11 June 1987 in Australia to Yamazaki's Australian distributor, John Hart Pty Limited, of detailed drawings of Yamazaki's Multiplex machine. Yamazaki accepts that its own machine falls within the scope of the claims of both petty patents. Therefore, unless the petty patents had, by virtue of the dates of the Japanese specifications, one of the earlier priority dates that I have mentioned, Yamazaki, by the publication in Australia on 11 June 1987, would have anticipated the claims in the petty patents.

3. The effect of ss. 45, 45A, 51, 141 and 142 is that for the petty patents to take the priority dates of the Japanese specifications the claims in the petty patents must be fairly based on the complete specification and upon the Japanese specifications.

4. The application for the complete specification was lodged on 28 April 1988, just within 12 months from the making of the first five of the applications for the Japanese specifications. The application for petty patent 140 was lodged on 21 June 1990, and the application for petty patent 669 was lodged on 6 July 1990. Interact and I.M.T. assert that these application dates are the respective priority dates, i.e. they deny fair basing in respect of the Japanese specifications.

5. Reference to some of the art is useful. The primary Judge stated the meaning of some of the technical terms used in the claims for the petty patents, and it is helpful to recount them. Each claim is for a "machine tool", a device used particularly for the shaping of metal objects by guided and powered relative movement between a cutting tool or tools and a workpiece. The term "spindle stock" is used synonymously with "head stock". It identifies those portions of a machine tool which hold the bearings in which the spindles are mounted, including drive gears and an enclosure designed to support the spindle and to transfer power from a motor to a workpiece mounted on the spindle; the motor may or may not form part of the head stock. The "tail stock" is a device for supporting the end of the workpiece (the object upon which machining is taking place so as to shape it into a component or part) so as to prevent deflection during that machining. The "Z axis" is the programming direction of the cutting tool relative to the workpiece, being parallel to the axis of rotation of the head stock spindle. On the other hand, the "X axis" is the programming direction of the cutting tool relative to the workpiece, being perpendicular to the axis of rotation of the head stock spindle. The "chuck" is a type of workpiece holding means which is attached to a spindle; the workpiece is generally secured to the chuck by clamp jaws or collets. The "turret" is a device for holding cutting tools which enables different cutting tools to be put into position by contact with the workpiece. A "tool rest" is the object upon which a cutting tool is located, but in the claims for the petty patents it refers to the object on which the turrets themselves are located.

6. In older mechanical manufacturing systems, parts were manufactured in a step by step operation so that, for example, in the case of components requiring several types of machining, such as turning, cutting, milling and drilling, each operation was carried out sequentially and usually upon different machines. As a result, there would be stocks of partly machined goods at each stage in the process. Towards the end of the 1970's, the introduction into Australia of the "just in time" concept of manufacturing involved the elimination of large inventories of unfinished goods and component parts, and the production of finished articles "just in time" to meet the requirements of customers. In response to these changes, there was a need for an integrated manufacturing process capable of producing at speed a range of parts in large or small quantities as required. There also developed computer numerical control ("CNC") machine tool technology. The high cost of this led to a need to reduce the number of machines required to produce the desired range and volume of parts. That in turn led to a requirement that CNC machine tools be capable of producing particular "families" or groups of parts.

7. The result of these developments was a need in the 1980's for machine tools capable of achieving batch manufacture with a minimum of lost time for set-up and tool changing. Another need was for transfer systems for parts which minimised the time required for transfer and thus minimised the lost manufacturing time. Systems for the transfer of parts had initially involved transfer by hand but had developed with the use of robotics integrated into the machine tool itself.

8. Mr J.M. Day, whom his Honour found to be a highly experienced specialist consultant called by Yamazaki, said that in his opinion, the machine tool, the subject of the petty patents, was a hybrid machine tool because what is taught by the specifications and claims is a two spindle machine tool capable of performing combined turning, milling and drilling operations as applied to bar work, shaft work and chucking work. In his opinion, the combination of all these machining functions in relation to different workpieces meets the objectives of "just in time" manufacturing procedures."

9. The primary Judge dealt with the question of construction and found that what is claimed is relative movability between the spindle stocks and that may be achieved if, relative to the frame, both are moveable or (as with the Nakamura machine tool) one is fixed and the other is moveable. This construction turned upon the claim as a whole, and in particular upon paragraph 6. In the light of this finding his Honour found that there was infringement of both petty patents. He considered each of the petty patents separately because petty patent 140 contained additional integers, but reached the same conclusion with respect to both. On appeal, counsel for all parties argued the appeal on the footing that there were no material differences between the two petty patents, and, in particular, between the inclusion in petty patent 140 of additional integers.

10. His Honour held that the claims are fairly based on the matter described in each of the petty patent specifications and that the claims are fairly based on the complete specification and Japanese specifications. He relied in particular upon the Japanese specifications exhibits 3C, 3D and 3E.

11. I turn first to the question of construction of the claims.

12. As mentioned earlier the claim in each of the petty patents is for a machine tool comprising a combination of integers. There is a large degree of commonality between the two claims. However, the claim in petty patent 140 included additional integers. In each patent the claim is set out in a series of unnumbered paragraphs; but I have placed numbers against them for ease of reference.

13. The text of the claim in petty patent 140 is set out below, the italics indicating the material which is additional to the claim in petty patent 669:
    

1. "A machine tool, comprising:

a frame;

2. first and second spindle stocks mounted on the frame;

3. first and second workpiece spindles rotatably supported by the first and second spindle stocks respectively, and sharing a common axis of rotation, each workpiece spindle having a workpiece holding means to hold a workpiece while it is machined, the workpiece holding means being positioned between the spindle stock to face each other;

4. first and second tool rests, associated with the first and second spindle stocks respectively, both disposed, with respect to the frame, to one side of the common axis, and both moveable at least in a direction perpendicular to the common axis;

5. first and second turrets disposed on the first and second tool rests respectively, each turret being free to rotate about an axis parallel to the common axis, the turrets being positioned between the tool rests such that side faces of the turrets face toward each other, and the arrangement being such that a gap, which may vary in size, is maintained between the first and second turrets;

6. the second spindle stock being moveable relative to the first spindle stock so as to deliver a workpiece to the second spindle stock from the first spindle stock;

7. in use one or more outside diameter machining tools, or inside diameter machining tools, or both, are mounted about the periphery of the first and second turrets;

8. the machining tools each have a workpiece machining portion, and the arrangement is such that when a mounted tool is positioned by rotating the turret on which it is mounted, to a machining position in which the tool extends from the turret towards the common axis, and when the machining portion thereof is advanced towards the common axis to the maximum extent for machining, the turret and its respective tool rest are separated from the associated spindle stock by a gap;

9. and the workpiece machining portions of the machining tool are arranged to machine a workpiece in a direction towards the associated spindle stock."

1. The second paragraph of the claim states that the two spindle stocks are mounted on the frame of the machine tool.

2. The fourth paragraph of the claim is concerned with the movability of the tool rests. The tool rests must be moveable at least in a direction perpendicular to the common axis. This is necessary because the machine tool is constructed so that the tool rest has tools on it and those tools approach the workpiece on the X axis which is the axis perpendicular to the axis of the rotation of the workpiece which is the Z axis. Hence it is necessary that movement of the tool rests occurs along the X axis. This paragraph states clearly that the tool rests must be moveable at least in a direction perpendicular to the common axis, but it does not say whether or not the tool rests must be moveable also along the Z axis. It is possible that there be movement along the Z axis, but this is not a requirement.

3. Paragraph 6 states that there must be relative movement between the two spindle stocks and that this is to enable the function to be performed of the delivery of a workpiece to the second spindle stock from the first spindle stock. The spindle stocks must be able to move relative to each other so that they may come together and deliver the workpiece from one to the other. In order to perform that function there is no requirement that either or both spindle stocks be fixed relative to the frame of the machine tool. The claim in paragraph 6 is that the relative movability between the two spindle stocks is required and that this may be achieved if both are moveable or one is moveable and the other fixed. Paragraph 6 is talking about relative movement, not whether one spindle stock is necessarily fixed or not. What is required is relative movement and it does not matter whether either spindle stock is fixed relative to the frame.

4. Paragraph 9 qualifies paragraph 4 because it (paragraph 9) deals with the arrangement of the workpiece machining portions of the machining tool so as to allow machining to take place in a direction towards the associated spindle stock, but the paragraph says nothing about the movement of the spindle stocks or whether they are fixed relative to the frame. It requires that there be a possibility of relative movement of the tool rest and the spindle. But it does not matter whether one or other of the spindle is fixed in the Z axis provided they are not both fixed. The machining portion must be relatively moveable with respect to the associated spindle.

5. Counsel for the appellants argued that upon their true construction the claims in both petty patents claim a machine tool in which both spindle stocks are moveable and not a tool in which one of the spindle stocks is fixed relative to the frame and is incapable of movement. The Nakamura machine tool has two spindle stocks but one of them, namely, the left-hand spindle stock, is fixed relative to the frame and is incapable of movement. If the argument of the appellants is accepted then it must follow that there is no infringement.

6. In my opinion, the teaching in the petty patents is that the two spindle stocks are moveable relative to each other, not that one of them may be fixed or not fixed relative to the frame. On their true construction the claims mean that the spindle stocks must be moveable relative to each other. This follows in particular from the critical paragraph number 6.

7. This is the construction of the claims which the primary Judge placed upon them and with which I agree. I also agree with his Honour that this is not a case where it is permissible to resort to the body of the specifications to define or clarify the meaning of terms used in the claim. Regard may be had to the body of the specifications to resolve an ambiguity in the language of the claims themselves, but there is no ambiguity in the claims of the patents in suit.

8. The primary Judge said, however, that if resort were to be had to the body of the specifications then in his view the result would support the construction of the claims which is contended for by the respondent; he referred in particular to the first fifteen pages of both petty patent specifications. I agree with his Honour's conclusion that what they establish is relative movement of the two spindle stocks, not the fixation or lack of fixation of one of them relative to the frame. What they teach is that relative movement of the two spindle stocks is critical, but this can be achieved by one of the spindle stocks remaining stationary while the other one moves towards and away from it.

9. As the Nakamura machine tool has two spindle stocks one of which is fixed and the other is moveable, and, as what is claimed in the two petty patents is relative movability between the spindle stocks which may be achieved if both are moveable or one is fixed and the other is moveable, there is infringement by the appellants.

1. I turn to the question of fair basing.

2. The origin of the phrase "fairly based" is not certain. It is suggested in Blanco White, Patents for Inventions 5th ed, para 2-211 that the phrase was apparently taken from the decision in Re Andreas (1934) 51 RPC 188, but the learned author states that the origin is disputed. He also refers in the same paragraph to the fact that the phrase "fairly within the nature of the invention" described in the provisional specification was used in earlier cases as the test of disconformity between the invention disclosed in a provisional specification and the invention ultimately claimed in a complete specification. The language is certainly similar, and I agree with Blanco White that the cases on disconformity may be of some guidance to the question of fair basing, though the cases under the old law of disconformity must be approached with caution. Disconformity in that sense arose because the delay that took place between the lodgment of the original specification and the subsequent lodgment of the complete specification led to situations where in the meantime inventors improved their inventions and claimed improvements in the complete specifications upon the original inventions as disclosed in the provisional specifications. Provided they were fairly based upon the disclosures in the provisional specification and not essentially a new invention they were permissible. Disconformity was part of the general law of patents: see Penn v Bibby (1866) LR 2 Ch App 127 per Lord Chelmsford at 132; Thomas v Welch (1866) LR 1 CP 192 per Willes J at 202; Tate v Haskins (1935) 53 CLR 594. The doctrine of disconformity assumed legislative form with the passing of the Patents, Designs and Trade Marks Act 1883 (46 and 47 Vict. C. 57) (Eng) in s. 9(1). The test of disconformity was expressly abolished in Australia by s. 65 of the Patents Act 1903 (Cth), the successors to which are s. 159(1) of the Act (the 1952 Act) and s. 26(1) of the 1990 Act.

3. The ground of revocation for disconformity is not as such available in Australia: see Tate v Haskins; and Coopers Animal Health Australia Limited v Western Stock Distributors Pty Limited (1987) 76 ALR 429 per Fox J at 435-6.

4. The question whether the claim in a complete specification is fairly based on matter disclosed in the provisional specification was considered by the Patents Appeal Tribunal (Lloyd-Jacob J) in Re Mond Nickel Co. Limited's Application (1956) RPC 189; see also Imperial Chemical Industries Limited's Application (1960) RPC 223 at 228. Lloyd-Jacob J did not seek to define in any complete sense the phrase "fairly based", but he gave a guide to the approach that should be made in deciding a question of the tests to be applied in deciding the question whether claims in a complete specification are fairly based on matters disclosed in the provisional specification. In F. Hoffman-La Roche and Co. Aktiengesellschaft v Commissioner of Patents (1971) 123 CLR 529 Gibbs J at 538-539 applied the same tests to determine the question whether a claim in a complete specification was fairly based on matter described in a basic specification within ss. 45(5), 141 and 142 of the Act. By substituting a reference to the basic application for a reference to the provisional specification, Gibbs J formulated the tests suggested by Lloyd-Jacob J in these terms:
   

"(1) Is the alleged invention as claimed

broadly (i.e. in a general sense)

described in the basic application?

(2) Is there anything in the basic application which is inconsistent with the alleged

invention as claimed?

(3) Does the claim include as a characteristic of the invention a feature as to which the basic application is wholly silent?"

His Honour stated that these questions are intended to assist the Court in applying the test laid down by the Act itself, namely, whether the claim in the complete specification is fairly based on matter disclosed in the basic application, but is not a substitute for that test. His Honour nevertheless held that in relation to these matters there is no point of distinction between s. 45(5) and ss. 141 and 142. See also AMP Incorporated v Utilux Pty Limited (1971) 45 ALJR 123 per McTiernan J at 131; Olin Corporation v Super Cartridge Co Pty Limited (1975) 49 ALJR 135.

1. The tests stated by Lloyd-Jacob J in Mond Nickel apply in my opinion to the present case to assist in the resolution of the question whether the claims in the petty patents are fairly based on matter described in the complete specification, the Japanese specifications and the petty patent specifications themselves.

2. I turn first to the submission of counsel for the appellants that the primary Judge erred in rejecting the contention that the claims in the petty patents are invalid in that they are not fairly based on the body of those patents, contrary to s. 40(2). It was argued that, assuming his Honour's construction of paragraph 6 of the claims is correct (so that the claims include a machine tool in which one spindle stock may be fixed relative to the frame), the body of the specification is silent as to this characteristic.

3. The submission is in my opinion misconceived because what his Honour held was that, upon their true construction, the claims do not require that there be a spindle stock fixed relative to the frame of the machine tool. The claims include the case where there is a fixed spindle stock, but they do not require it. His Honour therefore concluded that the occasion did not arise for him to consider whether the claims as construed by him were fairly based on the matter described in the petty patent specification within the meaning of s. 40. In my opinion this view of his Honour is correct.

4. However, an examination of the two petty patents in suit reveals that the specifications support the claims. In the "Summary Of The Invention" the point is made that the critical feature of the invention is that each spindle stock has freedom of movement relative to the other. Various possible embodiments of the invention are described; but what they are teaching is the relative movement of the spindle stocks for the purpose of delivering the workpiece from one to the other. I do not discern any limitation being imposed that both spindle stocks must be moveable relative to the frame.

5. I turn next to consider whether the claims are fairly based on the complete specification. It will be remembered that this question arises because petty patent specifications are divisional specifications under s. 51 of the Act. The complete specification is for the invention entitled "A Complex Machining Machine Tool and a Machining Method for the use of the Machine Tool". The abstract of the disclosure is expressed in the following terms:
   

"A complex machining machine tool having a single frame in which a chip collecting space is provided at the center portion, a first and a second spindle stocks on the frame being

relatively free to move and drive in Z axis direction in the shape of holding the chip collecting space, workpiece spindles on said spindle stocks being free to rotate and drive in the shape of facing mutually, and tool rests. The tool rests and the turrets can assume various kinds of movement forms. Furthermore, the complicated and various kinds of machinings can be performed in such a manner that the rotation control forms of the workpiece spindles and the spindle stocks are combined."

1. The abstract thus describes the movement of the two spindle stocks so that they are free to move relative to each other and drive in the Z axis direction. It does not state that either of the two spindle stocks is fixed to the frame. It states that the tool rests and the turrets can assume various kinds of movement. The "Summary Of The Invention" discloses a flexible machine tool with the capacity to deliver a workpiece from one spindle stock to the other. Relativity of movement of the spindle stocks to each other is again emphasised. It discloses that the machine tool has the capacity, by movement of the spindle stocks together and separately, to transfer a workpiece from one spindle stock to another. It says nothing as to whether either of the spindle stocks is or is not fixed relative to the frame. Again in my view the emphasis is placed upon the movement of the spindle stocks relative to each other.

2. The complete specification describes a number of embodiments of the invention. It is plain from the text of the specification that examples are given of cases in which one of the spindle stocks moves but the other remains stationary. It does not follow, however, that the patent teaches that it is essential that one of the spindle stocks remain stationary or fixed relative to the frame and is incapable of movement. In my opinion, throughout this very lengthy specification the impression is clearly conveyed that the essence of the teaching is that the two spindle stocks must move relative to each other. It is the relative freedom of movement between the spindle stocks that is important and it is this that produces the capacity for the delivery of a workpiece from one spindle stock to another.

3. The first of the Mond Nickel tests is whether the invention as claimed in the petty patents is broadly described in the complete specification. It is I think plain that the application of this test must result in an answer favourable to the respondent. Indeed, there is more than a broad description in the complete specification; the description is in fact somewhat detailed.

4. The second limb of the Mond Nickel test is whether there is anything in the complete specification which is inconsistent with the invention as claimed in the petty patents. I discern no such inconsistency. As mentioned earlier the claims stress the importance of the relativity of movement between the two spindle stocks. They do not exclude there being one of the stocks fixed provided the relativity of movement between the two stocks is not inhibited.

5. The third aspect of the test is whether the claims include as a characteristic of the invention a feature as to which the complete specification is wholly silent. Again this must be answered in favour of the respondent. There is no feature of the claims on which the complete specification is wholly silent.

6. It remains to consider the question whether or not the claims in the petty patent specifications are fairly based on the Japanese specifications.

7. I have read the reasons for judgment of Wilcox J on this question and agree with what he says about it and with his conclusion that none of the Japanese specifications fairly described the essential features of the invention disclosed in the Australian standard specification and therefore that the Australian specification does not have a priority date earlier than the Australian disclosure date, with the consequence that each of the petty patents in suit is invalid.

8. I would allow the appeal, set aside orders and declarations made by the primary Judge and in lieu thereof declare that each of the petty patents, numbered 601140 and 601669 is invalid; order that each of the said petty patents be revoked, that the application be dismissed and that the respondent pay the costs of the appellants of the proceeding at first instance and of this appeal.

JUDGE3

WILCOX J I have had the advantage of reading in draft form the reasons for judgment of Lockhart J. I need not repeat his Honour's account of the case, the nature of the subject invention or the relevant statutory provisions. I agree with his Honour that, if the two petty patents are valid, they are infringed by the Nakamura machine. I also agree that the claims in each of the petty patents are fairly based on the body of the petty patents themselves and upon the complete specification for a standard patent from which they are derived. I think that all of the Australian documents envisage the possibility that the necessary relative movement of the spindle stocks may be achieved either by having two moveable spindle stocks or by having one fixed spindle stock and one moveable spindle stock.

1. I propose to discuss only the final step in the argument necessary for the respondent's success: the proposition that the Australian standard specification is fairly based on one or more of the Japanese patent specifications (exhibits 3A to 3G) lodged prior to 11 June 1987, the date of disclosure of the invention in Australia. I agree with counsel's submission that each of the Japanese specifications envisages relative movement between the two spindle stocks. Relative movement between the two spindle stocks is an essential feature of the invention; without that movement it would be impossible to pass a workpiece from one spindle stock to the other. I agree also, as a theoretical proposition, that relative movement may be attained by providing either two moveable spindle stocks or one fixed, and one moveable, spindle stock. But, in the latter event, it is equally clear that the tool-rest associated with the fixed spindle stock must be capable of movement in two directions; not only on the X axis perpendicular to the line of movement of the spindle stock, so as to enable it to approach and withdraw from the workpiece, but also on the Z axis, parallel to the line of movement of the spindle stock. Each tool-rest has a number of faces, each bearing a separate tool. As the diagrams which form part of the various specifications illustrate, the necessary working distance between the tool-rest face and the spindle stock, along the Z axis, varies from tool to tool. So, if a particular spindle stock is fixed in position, not moveable on the Z axis, its associated tool-rest must be made capable of movement on the Z axis. It is, therefore, an essential feature of the invention, not only that there be relative movement on the Z axis between the two opposing spindle stocks but also between each spindle stock and its associated tool-rest. This point was brought out by Gummow J in his description of the essential integers of the invention. Point 9 referred to the workpiece machining portions of the machining tool being arranged "to machine a workpiece in a direction towards the associated spindle stock". This is impossible without relative movement between the spindle stock and the associated tool-rest along the Z axis. All of the Australian specifications teach that, if the choice is made to achieve relative movement between the two spindle stocks by having one moveable and one fixed spindle stock, rather than two moveable spindle stocks, it is essential that the tool-rest associated with the fixed spindle stock be moveable on the Z axis as well as on the X axis.

2. Six of the seven Japanese patent specifications expressly state that the relative movement between the two spindle stocks is to be obtained by having two moveable spindle stocks. They do not contemplate the possibility of a fixed spindle stock; still less do they mention its necessary consequence. In the seventh case, exhibit 3G, there is a suggestion of one fixed spindle stock but the inventors fail to teach the concomitant necessity of a Z axis tool-rest movement. In other words, this patent does not reveal the possibility of obtaining satisfactory spindle stock relative movement by combining the idea of one moveable, and one fixed, spindle stock with a two-directional movement of the tool-rest associated with the fixed spindle stock.

3. Lockhart J holds, and I agree, that the Australian specification envisages a machine which achieves the necessary relative movements by providing either:
   

(a) two spindle stocks each moveable towards the other on the Z axis, each with an associated tool-rest necessarily moveable only on the X axis; or

(b) two spindle stocks, one moveable towards the other on the Z axis with an associated tool-rest necessarily moveable only on the X axis, and the other fixed but with an associated tool-rest necessarily moveable both on the X axis and the Z axis.

1. The Japanese patents teach the first alternative. But if, upon a fair reading, none of the Japanese patents teaches the second method of providing the necessary relative movements, it could not be said that the Australian specification is fairly based on any of the Japanese patents. In that situation, it would have to be concluded that the Australian specification involves an additional idea; a second combination, not envisaged by the Japanese patents. It would not matter that both combinations achieve the same practical result, and that this is a result intended by the Japanese patents. The second alternative would be a different way of achieving that result, involving a different combination of elements.

2. As I have indicated, it seems to me that this is the effect of the Japanese patents. In order to make good that view, I must refer to each of them. Before doing so, I make the obvious point that it would, of course, have been possible to draft an Australian specification fairly based on the Japanese patents. But that would have been a specification confined to the first of the two alternatives set out above. It would have been a specification not infringed by the appellants' machine, which adopts the second of the two alternatives.

3. Exhibit 3A refers to an invention entitled "A Driving Structure of a Spindle Stock in a Complex Machining Machine Tool". The invention claimed is:
   

"A driving structure of a spindle stock in a complex machining machine tool having a machine body and two spindle stocks on said machine body capable of moving in Z axis direction independently in the shape of facing to each other comprising ..." (emphasis added)

1. Under the heading "Detailed Description of the Invention", is a sub-heading "Problems that the Invention is to solve". The material that follows includes a statement of the object of the invention:
   

"to provide a driving structure of a spindle stock in a complex machining machine tool capable of machining toward a long sized workpiece in such a manner that two spindle stocks facing to each other are synchronously moved and driven in Z axis direction" (emphasis added).

In other words, both spindle stocks are capable of moving in the Z axis direction.

1. This understanding of the invention claimed in exhibit 3A is borne out by the diagrams which follow the verbal description. Figures 1 and 3, which show the spindles in profile, each show wavy lines under each spindle stock. It is agreed that the wavy lines are a symbol for moveability. Numerous other figures show the tool-rests in various positions on the X axis, but without any lateral movement; that is, movement on the Z axis.

2. Exhibit 3B is entitled "A Driving Method of a Spindle Stock in a Complex Machining Machine Tool". The claim reads:
   

"A driving method of a spindle stock in a complex machining machine tool having a first and second spindle stocks being free to move in Z axis direction in the shape of facing mutually, driving means provided with those spindle stocks via driving mechanisms and capable of moving said first and second spindle stocks in Z axis direction via the driving mechanism by driving said driving means, said method comprising: ..." (emphasis added).

1. Under the heading "Problems that the invention is to solve" the patent says:
   

"In case of machining toward a long sized workpiece (not shown) making use of this complex machining machine tool 30, it is necessary that both right and left edges portions of the workpiece are held by the chucks 32a and 35a, and in this state, the spindle stocks 32 and 35 are synchronously moved and driven in Z axis direction.

In consideration of the above-described circumstances, the object of this invention is to provide the driving structure of a spindle stock in a complex machining machine tool capable of machining the long sized workpiece and the like by moving and driving two spindle stocks which are facing mutually in Z axis direction synchronously." (emphasis added).

1. Once again the diagrams indicate that both spindle stocks are moveable in the Z axis and fail to indicate any tool-rest Z axis movement.

2. Exhibit 3C is a patent entitled "A Machining Control Method in a Complex Machining Machine Tool". It contains two claims. Both of them refer to "(a) machining control method in a complex machining machine tool having the first spindle stock and the second spindle stock moveably and driveably in Z axis direction ..." (emphasis added). It is true that the described method involves a movement of the spindle stocks, in relation to each other. But there is no indication that this is to be achieved otherwise than by the use of two moveable spindle stocks. There is no hint in the patent of a Z axis tool-rest movement. Once again, the diagrams indicate that both spindle stocks are moveable and that movement of the tool-rests is only on the X axis.

3. Exhibit 3D is also a method patent: "A Machining Method of a Workpiece in a Complex Machining Machine Tool". It contains one claim. This refers to a "machining method of a workpiece in a complex machining machine tool having a first spindle stock and a second spindle stock which are provided being free to move and drive in Z axis direction ..." (emphasis added). Once again the diagrams show two moveable spindle stocks but no lateral movement of a tool-rest.

4. Exhibit 3E is a further method patent: "A Machining Method of a Workpiece in a Complex Machining Machine Tool". It also comprises a single claim:
   

"A machining method of a workpiece in a complex machining machine tool having the first spindle stock and the second spindle stock movable and drivable in Z axis direction in the shape of facing to each other, comprising; ..." (emphasis added)

1. The diagrams are similar to those earlier mentioned.

2. Finally, exhibit 3G refers to an invention entitled "An Opposed Spindles Lathe". This patent is not easy to understand. It differs from its predecessors in that it does suggest the possibility of only one spindle stock moving in the Z axis direction. But it also speaks of the two spindle stocks approaching each other and separating. The claim reads:
   

"An opposed spindles lathe, comprising; the first and the second spindles rotatably provided in the shape of facing to each other; rotation driving means connected with said first and second spindles so as to be able to rotate and drive the spindles and feed driving means connected with said first and second spindles so as to be able to move and drive one spindle at least in Z axis direction; memory means storing workpiece delivery program; C-axis control means connected with said rotation driving means so as to position said first and second spindles at a predetermined delivery position by driving and controlling the rotation driving means on the basis of said workpiece delivery program; and feed driving control means connected with said feed driving means so that the first and second spindles may approach each other and the first and second spindles ay separate each other by driving and controlling the feed driving means on the basis of said workpiece delivery program." (emphasis added).

1. There is similar language in that part of the patent which is headed "Means of Solving the Problem".

2. Exhibit 3G provides the high point of the respondent's case on this issue. But I do not think that it teaches the invention described in the Australian standard specification. The reference to being able to move and drive "one spindle at least" is, at best, ambiguous. Not only is there the reference in the claim to the two spindle stocks approaching each other; the feed driving means is to be connected to each spindle stock. It would be unnecessary to fix a feed driving means to a fixed spindle stock. Moreover, the diagrams included in this patent, like those previously noted, indicate that each spindle stock is moveable.

3. More importantly, there is no indication in the patent - even in the diagrams - that any tool-rest is to be capable of moving in the Z axis as well as the X axis. The patent does not explain how the lathe would operate if only one of the spindle stocks moved on the Z axis.

4. It would, of course, be wrong to limit the patent claim and description by reference to its stated embodiments, but the fact is that the only reference to tool-rest movement is in the section of the patent dealing with embodiments. There it is explained that the "two turret type tool-rests ... are moveably and driveably provided only in the directions as shown by the arrows G and H"; that is, the X direction. A reader of this patent would not glean from it the essential point that, if one of the spindle stocks is fixed, the tool-rest associated with that spindle stock must be made two-directional. On the contrary, all of the available information on the point would lead the reader to the opposite conclusion.

5. In the result, I am of the opinion that none of the Japanese patents fairly described the essential features of the invention disclosed in the Australian standard specification. It follows that the Australian specification does not have a priority date earlier than the Australian disclosure date. Consequently, each of the petty patents is invalid.

6. Some people may feel that this is a harsh conclusion, because the Australian specification merely provides two alternative methods of achieving the result envisaged by the Japanese patents. But it must be remembered that these patents, Japanese and Australian, are all combination patents. The inventors do not claim that any element in their combination is itself new. Their entitlement to claim a patent wholly depends upon their inventiveness in choosing the appropriate combination of a number of already-known integers. The principle was expressed in the well-known passage from the speech of Lord Tomlin in British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171 at 193:
   

"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers."

1. The substance of this passage was adopted by Viscount Simonds in Martin and Biro Swan Ltd v H Millwood Ltd (1956) RPC 125 at 132. See also the comments regarding combination patents of Griffith CJ in Peacock v D M Osborne and Co (1907) 4 CLR 921 at 927-928.

2. It is instructive also to consider the decision in Shave v H V McKay Massey Harris Pty Ltd (1935) 52 CLR 701. Although that was an infringement case, what the High Court said about the proper approach to a combination patent equally applies to a fair basing issue. The appellant held a patent for a reversible stump-jump disc plough. The patent did not claim that any integer was new; the claim was for a particular combination of parts. Disc ploughs, the discs of which were susceptible of automatic reversal, were not unknown. But no plough had been devised which combined the actions of stump jumping and automatic reversing. In other words, as in the present case, the patentee was the first person to create a single machine which combined two already-known functions. The respondent produced a plough which also combined these functions. It was like the appellant's plough but it substituted a different mechanism for a particular horizontal spindle used by the appellant. The question was whether this variation avoided infringement. At 708 Rich, Dixon, Evatt and McTiernan JJ pointed to the courts' increasing emphasis on the claims in the specification, since claims became obligatory. They went on at 709:
   

"When a combination claim states an invention which gives an old result by a new means, the monopoly is limited, at any rate prima facie, to the new means. But when by a new application of principle the inventor has obtained a new result or thing, even when it be done by a combination, he may claim all the alternative means by which the thing or result may be achieved."

1. Their Honours went on to speak of the position of a patentee who fails to claim all the alternative means of achieving the new result:
   

"The difficulty of the present case arises from the fact that an analysis of the plaintiff's stump-jump and reversing combination shows that it does embody a principle or application of principle capable of expression by a number of mechanical alternatives, which in all probability he might have covered successfully by a claim drawn generally, or even by a claim drawn specifically if accompanied by appropriate indications of the nature of the principle embodied.

But 'it is beyond doubt that an inventor claiming something more than the mere mechanism described is bound to make his intention reasonably clear ... It is not sufficient for the inventor to discover his gold mine - he must also peg out his claim. Outside the pegs, the gold, if it be there, is free to all. This principle is of vital importance in patent law, though it may be that in some of the earlier cases to be found in the books it was not clearly borne in mind'."

1. In disposing of the case, their Honours at 709-110 stated that the appellant's claim:
   

"... is for the mechanism he describes. It is not a claim for the construction of a plough embodying the result produced by that mechanism or by any means which consist of substantially similar mechanical ingredients combining for the same end. It does not follow that a form of construction cannot amount to an infringement unless it contains what precisely is a spindle. Obvious mechanical substitutes for the spindle may be merely a disguise or cover under which the reality of the mechanism described in the claim is taken. But the defendant's plough is much more than this. The distribution of functions belonging to the spindle had been accomplished in the defendant's machine in an ingenious manner involving a change in design. For all that appears, the plaintiff's plough may be the source of the defendant's plough, but the ideas which flowed from that source are not entirely included within the claim. For one idea stated in the claim, namely the spindle, others have been substituted. The substitution may not be meritorious. But, owing to a narrowness in the claim, which may be attributable to design or misfortune on the plaintiff's part, the substitution is enough, in our opinion, to take the defendant's plough outside the area of the plaintiff's monopoly."

1. This passage could be adapted, comment by comment, to the present case.

2. To grant a patent is to grant a monopoly over a particular item. Where no integer is new, that grant is justified only by the contribution to science and industry made by the person who brought together particular old integers in a "working inter-relation producing a new or improved result". Assuming that this contribution involves an inventive step, and the patent application is not open to objection on other grounds, the inventor is entitled to a grant of a patent in respect of the particular combination which he or she devised. There would be no logic in granting the inventor rights in respect of a different combination, which he or she did not devise, even though the second combination might employ similar principles and achieve the same practical result.

3. I agree with the orders proposed by Lockhart J.