Nelson v Hillmark Industries Pty Ltd

[1993] FCA 1079

IN THE FEDERAL COURT OF AUSTRALIA )

SOUTH AUSTRALIAN DISTRICT REGISTRY ) )

)

GENERAL DIVISION ) No. SA G46 of 1993 I

BETWEEN:

C!OLIN PETER NELSON

First Applicant

COLIN NELSON NOMINEES

PTY LTD

Second Applicant

AND :

HILLMARX INDUSTRIES PTY

LTD

Respondent

MINUTES OF OKDER

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JUDGE MAKING ORDER VON DOUSSA J.

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WHERE MADE ADELAIDE

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DATE OF ORDER 6 DECEMBER 1993

1. THE COURT ORDERS:

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1.    The Court rules that there is no case to answer at the close of the applicants' case on infringement.

5 . The exhibits be released to the parties with Exhibits R2 and R7 going to the applicants upon the expiry of the

2. Application dismissed.

3.   Leave to the respondent to discontinue the cross-ciaim for revocation without liability for costs unless otherwise ordered.

4 .    The respondent recover its costs of the action from the applicants.

THE FEDERAL COURT OF AUSTRALIA )

1

SOUTH AUSTRALIAN DISTRICT REGISTRY j

)

GENERAL DIVISION ) NO. SA G46 of 1993

BE:TWEEN:

COLIN PETER NELSON

First Applicant

COLIN NELSON NOMINEES

PTY LTD

Second Applicant

AND :

HILLMARK INDUSTRIES PTP

LTD

Respondent

i EX TEMPORE REASONS FOR DECISION

Coram: von Doussa J.

Date : 6 Decembf?r 1993

Ruling on submission of no case to answer.

The proceedings instituted by the applicants allege
infringement of Patent No. 573107 for an invention Eor

"Conversion of solid fuel barbecue kettle or aas fired

[ barbecue kettle".

The respondent denies infringement on a number of grounds. First it is alleged that the Patent is invalid by reason of prior publication, lack of inventive step and obviousness, lack of novelty not otherwise covered by the Preceding two grounds, and non-compliance with s.40 of the Patents 1990. In respect of those issues there is also a
claim in which the respondent seeks revocation of the Patent. ~lternatively,	it is asserted by the respondent that

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there has been no infringement because the respondentrs

kit for a kettle barbecue does not use the invention claimed in the completed specification.

To prove his case the first applicant has given evidence describing his invention; and a number of barbecues, barbecue appliancesr related brochures, and other documents have been tendered. On that evidence and certain admissions by the respondent the applicants rested the case for infringement.

The respondent then sought to argue that the evidence did not make out a case that required answer on the infringement

issue. Upon the Court raising the future of the revocation

cross-claim in the event that that submission were otherwise

to be upheld, the Court was informed that if the submission

were upheld, the cross-claim would not be proceeded with.

Given that announcement, I allowed the no-case submission to

be argued without putting the respondent to election as the

respondent contended that the sole ground for the submission

was that an hiatus exists in the applicants' evidence such

that the applicants could not succ~ed	even if all the evidence
led were accepted.

That argument had three limbs. The first was that the respondent's alleged infringing conversion kit did not incorporate spacer clips fitted to the bowl of the barbecue, that being one of the essential inl.egers of the Patent claims. The other two limbs alleged that the evidence failed to show

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that the respondent's alleged infringing product involved a method or employed apparatus which produced the result claimed in claims 1 and 2 of the Patent. Those arguments are related

to the physical effects of a space produced between the lid

and the bowl.

This morning when the case was called on again, Mr Anderson, QC for the applicants announced that in the event that the first ground for the no-case submission failed, he would seek to reopen his case to call further evidence directed to the deficiencies alleged by the respondent on the second and third limbs of its submission. That being the situation, I shall put them to one side and concentrate upon the allegation that the evidence could not support a finding

of infringement because the respondent's conversion kit does

not employ "spacer clips fitted" to the barbecue bowl within
the meaning of the claims of the Pat.ent.

The critical claims in the completed specification as granted are claims 1 and 2. Claim l reads:

1.   A method of converting a solid fuel barbecue kettle

having a bowl and a lid to a gas fired barbecue kettle,

said method including the steps of removing the solid

fuel mechanism from the bowl and positioning within the l

lower portion of the bowl at least one gas burner, a gas

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pipe to the burner passing through a hole in the bowl in the lower portion of the bowl and fixing the burner in position, and providing a plurality of circumferentially

spaced spacer clips fitted to the upper edge of the bowl so that when the lid is in position, a ventilation gap is provided between the upper edge of the bowl and the lid sufficient to allow substantially all the products of combustion to escape there through.

Claim 2 deals with the apparatus in corresponding terms but not identically corresponding terms. Importantly the claimed apparatus requires a plurality of circumferentially spaced spacer clips fitted to the upper edge of. the bowl to space the said lid from the upper edge of the bowl in the closed position of the lid so as to provide ventilation.

The question is whether the? respondent's conversion kit

to produce the space which undoubtedly it does between the lid

/	and the bowl employs circumferentially spaced "spacer clips fitted" within the meaning of those claims.
The preferred embodiment in the completed specification which is particularised in the figures shows a single metal item, number 16, which, on any view, would be a clip fitted to the bowl. The respondent's kit however involves the
which has two vertical limbs with a bent over hook at the top incorporation into the kettle of four wire items, each of
of each limb which hooks over the edge of the lower bowl with the result that when the lid is placed in its normal position it does not fit flush with the lower bowl. It is spaced the diameter of the wires above the lower bowl. Do those wire

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devices come within the concept of "spacer clips fitted" to
the upper edge of the bowl?

The rules of construction which must be applied in construing the specification, including the claims, are

helpfully summarised by Sheppard J in his decision in Decor	1
corporation Pty Limited and Anoth~r v Dart Industries Inc.
(1988) 13 IPR 385 at pp.397-401. I have considered those
rules and also the authorities upon which they are based. The
primary rule is that the claims define the invention which is	1
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the subject of the patent, and in construing them according to their terms, that must be done on ordinary principles. Any purely verbal or grammatical question that can be answered according to the ordinary rules of construction of written documents is to be resolved accordingly.
The word "clip" or the collocation of words "spacer clipsw or "spacer clips fitted" is not or are not terms of
a . I have evidence from the first applicant. His primary
expertise is that of a salesman of barbecues and like
equipment. Without wishing to be disrespectful, he is without
technical knowledge of the physics of the operation of the
barbecue or of the metal work principles that might be involved in the manufacture of his invention. His evidence does not in any sense provide any technical assistance in construing the meaning of the word "clip" or the expressions "spacer clips" or "spacer clips fitted".	I
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There is no definition of any of those words in the specification. I have made reference to the preferred	~
embodiment of the invention shown in the figures but I am	~
unable to draw any assistance from the physical characteristics of the spacer item there shown which could usefully assist in resolving this case. It seems to me, therefore, the starting point must be the ordinary meaning of the word "clip", and one inevitably goes to the dictionaries for that meaning.
The Shorter Oxford English Dictionary, Third Edition, defines the verb "to clip" to mean "to grip tightly", and
correspondingly defines the noun as "that which clips or
clasps". There are certain special technical meanings for
farriers and the like, but they are not relevant for present
purposes. The Oxford English Dictionary, Second Edition,
relevantly describes the noun as: "That which clips or clasps;
an instrument or device which clasps or grips objects tightly
and so holds them fast". The Macquarie Dictionary, Second

Edition, relevantly defines a clip as "a device for gripping and holding tightly; a metal clasp, esp. one for papers, letters, etc. "

The common characteristic in those definitions is that

the item said to constitute a clip has the ability to grip or

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hold tightly, and indeed, that is the obvious function of the metal object shown in the preferred embodiment. It is something that holds tightly on to the upper edge of the bowl

of the barbecue.

In my view, it is quite impossible to describe the bent wire devices of the respondent's kit, which are hung over the upper edge of the bowl of the kettle, as clips, in that dictionary sense. They do not have the quality of gripping, let alone gripping tightly to the upper edge.

However, Mr Anderson rightly says, that in construing a completed specification and claims, one must adopt a purposive construction. To so assert is to invoke what is otherwise referred to as the "pith and substance" test, to which he also referred. Under that test, the inquiry becomes one of whether the respondent's means of spacing the lid is just a colourable variation of essential integers of the invention as claimed.

But the exercise is still one of construing the Patent,

to ascertain the scope of the monopoly granted by it. In

Walker and Another v Alemite Corporation (1933) 49 CLR 643 at

657, Dixon J, as he then was, made the following observations

alleged infringement. in relation to a lubricating nipple that was the subject oC an "It is not a particular applj-cation of some inventive idea which may be applied to produce the same new result in other ways. It describes and claims an appliance of definite construction exhibiting specified features in combination. The claim to protection ex facie appears to be based upon the association of these features so as to produce the useful result. The question is not whether the differences of construction in the respondent's nipple and in that of the appellant are material to the utility of the appliance or to the manner of performing

its function or whether ingenuity is involved in the changes. The question is: How wide is the monopoly? Once it is determined that the discarded features are essential to the claim, the substitution of other means of performing the like funct.ion cannot amount to infringement by colourable variation, or by the use of a mere mechanical equivalent. The changes are not insubstantial variations in detail under colour of whiah the thing claimed is taken. They are not other mechanical embodiments of the inventive idea for whioh protection has been obtained. The claim itself makes them cardinal. The intention of the appellant to take advantage of the narrowness of the monopoly is, of course, immaterial."

I was referred also to the speech of Lord Diplock in

Catnick Components Limited and Another v Hill and Smith

Limited (1982) 99 RPC 183 and in particular at pp.242 and 243,

and to a decision of the Full Court of this Court, in Populin v H B Nominees Pty Ltd (1982) 41 ALR 471 at pp.476-477. In the latter case, the Full Court said:

"The complete specification must not be read in the abstract but in the light of common knowledge in the art before the priority date, bearing in mind that what is being construed is a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood (see

generally Welch Perrin & CO Pty Ltd v Worrel (1961) 106

CLR 588 at 610). The essential features of the product

or process for which it claims a monopoly are to be determined not as a matter of abstract uninformed
construction but by a common sense assessment of what the

words used convey in the context of then-existing

published knowledge."

The Court went on to cite from Lord Di.plockfs	speech, which I
shall not read.

The problem arising under the pith and substance argumena
might be expressed this way: were the means adopted by the

respondent in utilising the wire hangers in lieu of a spacer clipr such as that shown in the preferred embodiment, the use by the respondent of a means of achieving a space, deliberately left open by the terms of the claims or were Chey

not?

In deciding that question, I agree with M.r McCarthy QC, who appeared for the respondent t.hat it is legitimate to invoke s.116 of the Patents Act 1990. That section provides that the Commissioner or a Court, may, in interpreting a complete specification as amended, refer to the specification without amendment. In this case, there was a specification filed that was later amended, and the relevant parts of the claims now before the Court were introduced by the amendments. As the above passage from Populin v HB Nominees indicates, it

is important to adopt a common sense construction of the claims, having regard to the state of the prior art. The prior art forms the background and context in which the claim is formulated.

When one goes to the complete specification before it was amended, one finds in the claims no reference to "spacer clips fittedn to the upper edge of the bowl, but rather claims for both a method and an apparatus that has "spacer means fitted" to the upper edge of the bowl. So there is an important variation between that specification and the amended sPe~ification as granted, in that the claims have been narrowed from ones providing "spacer means fitted" to the 0 7 4 0

upper edge of the bowl, to more precise ones in respect of a plurality of circumferentially spaced "spacer clips fitted" to

the upper edge of the bowl. There is significance in this 1 l

change when one has regard to prior art. It must be said that the Court has not been taken on an extensive journey into the prior art in barbecues and related ventilation systems, but even on the information before the Court there is Exhibit R1 which is an early edition of a Weber gas fired barbecue. I do not overlook that the claim in this case is for a conversion kit, but nevertheless if one is converting from a solid fuel barbecue to a gas fired barbecue it is not irrelevant to have regard to the features of gas fired barbecues because it could be expected that the same essential features would be required in the converted model if it were to work.

A notable feature in Exhibit R1 is that spacer means are provided around the upper lid to keep the lower surface	l
thereof separated from the upper edge of the lower bowl,	l
thereby providing a gap between the two. So the notion of a space between the lid and bowl is not novel and spacer means
one looks at the variation between the specification as lotiged	Of the kind embodied in the lid of R1 are not novel. So when
and the specification as amended one can see that there is Significance in the limitation from "spacer means fitted'' to "spacer clips fitted" because the former description would not describe a novel inventive step. It would only describe an obvious adoption of the prior art used in Exhibit RI.

The claim to novelty, the essential integer, in claims 1 and 2 of the amended specification as granted, was the employment of "spacer clips fitted" to the bowl, that is, something fitted to the upper edge of the lower bowl that gripped tightly, and in the gripped-on position provided the means of producing the space. With that history I conclude

1. that the amendment to the specification which substituted the

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words "spacer clips fitted" for "spacer means fitted" was

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intentional and that the limitation to l8spacer clips" was algo

1 intentional. The drafting of the claims deliberately left

open other means of producing a space.

If the claims are so interpreted, the use of wire
hangers, such as those in the respondent's conversion kit, in
my view, is not a colourable imitation of the claim insofar as

I the integer requires "spacer clips fitted", but it is a different method of producing the space.

For these reasons I uphold the submission of the respondent that the evidence of the applicants cannot make out	a case that the barbecues fitted with the respondent's
conversion kit involve an infringement of the Patent held by
the first applicant and licensed to the second applicant. I

Subject to any further submissions, I think it follows that I should dismiss the ap~lication.

I certify that this and the

IL preceding pages are a

true copy of the Reasons :for Judqment of Mr Judtice von ~ouisa

n M O

Associate:

Q :  6

counsel for the applicants	: Mr T R Anderson QC
Solicitor for the applicants	: Messrs Stratford & CO
Counsel for the respondent	: Mr K R McCarthy QC and

Mr D S Hart

Solicitor for the respondent	: Messrs Phillips Fox
Dates of hearing	: 1,2,3 & 6 December 1993