Populin v HB Nominees Pty Ltd

[1982] FCA 37

Re: PETER POPULIN and LEWIS POPULIN
And: H.B. NOMINEES PTY. LTD. (CARRYING ON BUSINESS UNDER THE REGISTERED NAME
OF H.B. MACHINERY)
And: JOHANN VINZENZ BINDER and GUISEPPA MARIA BINDER (1982) 59 FLR 37
No. G8 of 1981
Patent

COURT

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
Bowen C.J.(1), Deane(1) and Ellicott(1) JJ.

CATCHWORDS

Patent - Infringement alleged - Combination patent - Distinction between essential and inessential integers - One integer not taken - Whether essential.

Patents Act, 1952 s.40.

Patents - Combination patent - Infringement alleged - "Pith and marrow" test - Essential features of patentee's claim - Whether alleged infringer has taken all essential features - Patents Act 1952 (Cth), s. 40.

HEADNOTE

The appellants were owners of letters patent to an invention relating to a machine for planting sugar cane. The respondents manufactured and sold after the date of the appellants' patent a machine which, in the view of the appellants, infringed their patent. The appellants sued and lost in the Supreme Court of Queensland (Connolly J.) and then appealed.

Held, per curiam, that on the "pith and marrow" test the separate nature of the small bin and the supply container was a deliberate and essential feature of the patented invention. In the respondents' machine the trough at the front of the respondents' hopper and the rear part of it were elements of one large container. The appeal should therefore be dismissed.

Radiation Ltd. v. Galliers and Klaerr Pty. Ltd. (1938), 60 CLR 36; Olin Corporation v. Super Cartridge Co. Pty. Ltd. (1977), 51 ALJR 525; Catnic Components Ltd. v. Hill & Smith Ltd., (1981) FSR 60, followed.

Welch Perrin & Co. Pty. Ltd. v. Worrel (1961), 106 CLR 588; Beecham Control Group Ltd. v. Bristol Laboratories Ltd., (1978) RPC 153; Marconi v. British Radio-Telegraph and Telephone Co. Ltd. (1911), 28 RPC 181; Walker v. Alemite Corporation (1933), 49 CLR 643; Warren v. Coombes (1979), 142 CLR 531, referred to.

Clark v. Adie (1875), 10 Ch App 667; Minnesota Mining & Manufacturing Co. v. Beiersdorf (Australia) Ltd. (1980), 144 CLR 253, considered.

HEARING

Sydney, 1981, October 20-22; 1982, April 6. #DATE 6:4:1982

Appeal from a judgment of the Supreme Court of Queensland (Connolly J.) to the Full Court of the Federal Court of Australia.

C.J. Bannon Q.C. and S.M.P. Reeves, for the appellants.

C.W. Pincus Q.C. and R.S. O'Regan, for the respondents.

Cur. adv. vult.

Solicitors for the appellants: Roberts Leu & North.

Solicitors for the respondents: Mighell Lee-Bryce & Vandeleur.

E.F. FROHLICH

ORDER

1. The appeal be dismissed with costs.

JUDGE1

The appellants are the owners of Letters Patent No. 487810 which created patent rights to an invention relating to a machine and a method for planting sugar cane. The respondents, after the date of the appellants' patent, manufactured and sold a machine which the appellants considered was an infringement of their patent and in respect of which they sued for infringement in the Supreme Court of Queensland. The Supreme Court (Connolly J.) held that there had been no infringement and the appellants have appealed to this Court.

Prior to the invention, it had been common practice to plant sugar cane by using a machine in which the cane was fed manually in long sticks into the machine where it was chopped into small lengths or billets and planted in a trench and covered by the machine as it moved across the previously prepared field. It had also been the practice until sugar cane harvesters were developed to cut the sugar cane manually. However, with the use of these harvesters, cane harvested by machine could be chopped into billets which were suitable for planting.

The appellants and their co-inventor, Guiseppe Scalia, (who has since assigned his rights in the patent to the appellants) decided to develop a planting machine which would enable chopped billets obtained from sugar cane harvesters to be used. This, however, confronted them with a problem. Whereas, in the existing planting machines, long sticks of cane were taken from a neat stack and fed manually into the planting machine to be chopped into billets and planted, a different means would have to be developed in order to ensure that the pre-chopped billets would be fed regularly and efficiently into the planting mechanism of the machine. As they said in their specification, the billets would be dumped into a supply bin "with random orientation". They therefore had to concentrate on the means whereby the billets so dumped could be fed into the planting mechanism.

An embodiment of the invention is described in the specification. It consists of a planting head, a rather small bin attached to the planting head and a large supply bin to the rear used for storing bulk cane. Cane from the bulk storage container is fed into the relatively small supply bin by means of a conveyor. The relatively small supply bin is defined as being such that the weight of sugar cane billets capable of being contained when supplied with random orientation in the bin and filled to a normal maximum level is "small compared with the weight of one ton".

In order to feed cane to the planting head a conveyor moves continuously through the small bin. It is claimed that by having the conveyor moving through a small bin containing relatively few billets, these billets are in a state of continual agitation. This movement together with a feature of having the floor of the bin steeply angled towards the conveyor causes the billets to align themselves so as to be picked up by the flights of the conveyor. They are then lifted to the planting shute and guided to the planting head. If a surplus of billets is picked up by the conveyor there is an ejection means towards the top of the conveyor which removes the surplus billets and returns them to the bin. The billets are finally dropped in an end to end relationship along the planting path.

The respondents' machine (the Binder machine) also utilizes ready cut cane billets. It consists of a planting head and a large cane hopper. The cane billets are loaded with random orientation into the large hopper. They are then fed into the planting head by means of a conveyor which constitutes the front wall of the hopper. Immediately adjacent to the conveyor is a trough, the bottom floor of which is steeply angled down towards the conveyor. However, this trough continues on below the bottom of the conveyor and contains fungicide. In effect, the conveyor moves within this trough. There is a small space between the conveyor and the lower edge of the angled floor. According to the respondents, billets of cane are able to drop between the conveyor and the angled floor into the fungicide at the bottom of the trough. They are then picked up by the flights of the conveyor for carriage upwards and over to the planting head. According to the respondents it does not matter if a large volume of cane is above the bottom of the conveyor and in practice the respondents' machine is filled so that billets of cane are resting against the conveyor to a height somewhat short of the top of the conveyor and below the ejector mechanism. The cane billets taken up by the conveyor to the planting head are duly positioned and planted in an end to end relationship along the planting path.

Although after the hopper is filled the cane billets rest for some distance up the conveyor, as the machine proceeds this level falls and the main quantity of billets carried is in the back of the container. To ensure that these may be advanced selectively to the conveyor the floor of the back of the rear part of the container may be hydraulically raised pivoting at about the point where the bottom of the trough is angled down towards the conveyor. The hydraulic raising of the hopper floor is thus used to cause billets to slide forward into the trough.

Mr. Binder applied for a patent (No. 43809/79). In his specification, which he agreed was the same as the machine complained of, he uses the term "hopper" for that part of the container which may be raised by the hydraulic ram, and the term "tank" for what has been referred to as the "trough".

While the appellants claim that the restriction of billets going to the conveyor to those which are in the relatively small bin permits turbulence and assists in orientation, the respondents' claim they have found that this is unnecessary and that it is for this reason they are able to fill the large container to quite some distance up the conveyor. However, it is plain that when the conveyor of the Binder machine takes up cane billets it does so from the bottom. If any billets get on to the cleats from those which are stacked high up the conveyor, these will be knocked off by the ejector means. One reason why this must be so for the Binder machine to operate in the manner intended is that only those billets at the bottom will have been dipped in the fungicide. It further seems plain that the sloping floor of the trough coupled with a degree of turbulence within the trough tends to orient the cane billets so they will be properly taken by the cleats on the conveyor. Mr. P.L. Mizzi, an Engineer called by the respondents, agreed in evidence that one of the purposes of the small trough or tank was to get the billets moving around and to sort themselves out in line with the cleats of the conveyor although he thought the main purpose was to hold the fungicide. He said that in the tank the billets were turbulent and that in moving around some rotate and align themselves with the cleats. On the other hand, in the hopper section the cane was static. Mr. B.D. Schmidt, another Engineer called by the respondents, agreed in evidence that the idea of the Binder machine was to take the material from the hopper into the tank where it was dipped in fungicide and went up the cleats. He agreed that the billets in the tank would be in a state of turbulence which would decrease as one moved away from the conveyor and there would be a fairly clear division between those billets which were in a state of turbulence and those which were not. He expressed the opinion that the greater load of cane on top in the case of the Binder machine would tend to suppress that turbulence.

Although there was claimed to be a difference of philosophy in the construction of the two machines, and undoubtedly the Binder machine adds the function of dipping the billets in fungicide and operates on the basis that the load of cane may be such as will tend to suppress turbulence, nevertheless there is a good deal that is common in the philosophy. What happens in the operation of both machines regarding orientation of the cane billets is very similar.

The question before us is largely one of fact. The learned trial Judge does not appear to us to have misconceived the principles to be applied and the question before this Court is whether he has applied those principles correctly to the facts of the case. The credibility of the witnesses is not in issue, and this Court, sitting on appeal, is therefore in as good a position as the trial Judge to decide on the proper inferences to be drawn from the facts. In the course of so deciding, it should, however, give due respect and weight to the conclusion of the trial Judge (see Warren v. Coombs (1979) 23 A.L.R. 405).

Section 40 of the Patents Act 1952, provides that a complete specification shall fully describe the invention including the best method of performing it known to the applicant and shall end with a claim or claims defining the invention which shall be clear, succinct and fairly based on the matter described in the specification.

Many patents are combination patents. That is to say, they consist of the combination of a number of known integers which work in relation to one another so as to produce a new or improved result. This is the case with the invention claimed in the appellants' patent. None of the elements claimed is new in itself. What is new is the working relationship of the various elements to produce a new and improved machine for planting cane. Because of the requirements of provisions such as s.40, it has become the practice to set out in the claim, sometimes at great length, the elements or integers of the invention. As in this case it is also common for the first claim to be added to or varied in the subsequent claims. This progressively adds elements to the combination, which tend to make an attack upon the grounds of want of subject matter or want of novelty more difficult. The effect is progressively to narrow the area of monopoly claimed.

It has often been said that the claims operate as a disclaimer of what is not specifically claimed (e.g. Walker v. Alemite Corporation (1933) 49 C.L.R. 643 per Dixon J. at p. 656). They therefore determine the extent of the patentee's monopoly. The patentee must be vigilant to claim only the essence of the invention. This is particularly so in relation to a combination patent. It is important to claim only the essential integers in the combination or to distinguish what is essential from what is inessential. For to establish infringement of a combination patent, the patentee must show that the defendant has taken each and every one of the essential integers of the patentee's claim. Therefore if, on its true construction, the claim in a patent claims a particular combination of integers and the alleged infringer of it omits one of them he will escape liability.

At the same time, however, the courts have avoided too technical or narrow a construction of claims. In Radiation Limited v. Galliers and Klaen Pty. Limited (1938) 60 C.L.R. 36 Dixon J. at p. 51 said:-
"But, on a question of infringement, the issue is not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged 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."

It is in reliance on this approach that the courts have held that a defendant will not escape infringement by adopting what are immaterial variations, for example, by omitting an inessential part or step and substituting another part or step as its equivalent. (See Marconi v. British Radio Telegraph and Telephone Co. Limited (1911) 28 R.P.C. 181 per Parker J. at p.217). It was considerations such as this that led early in the history of patent law to the development of what has been termed the "pith and marrow" or "pith and substance" test. The classic statement of it is found in the judgment of James L.J. in Clark v. Adie ((1875) 10 Ch. App. 667 at p. 675) where he said:-
"The patent is in 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 would 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".
The existence of this doctrine is still recognized by the High Court. But its limitations must be borne in mind. Thus in Olin Corporation v. Super Cartridge Co. Pty. Limited (1977) 14 A.L.R. 149 at p. 157, Gibbs J. (as he then was) after referring to the above passages said:-
"The statements in these passages are still good law; see C. Van der Lely N.V. v. Bamfords Limited (1963) R.P.C. 61 at p.75. However, as was pointed out in C. Van der Lely at 78 and 80, 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; See Rodi & Weinenbirger A.G. v. Henry Showell Limited (1969) R.P.C. 367 especially at 383-4".

In Minnesota Mining & Manufacturing Co. v Beirsdorf (Aust.) Limited ((1980) 29 A.L.R. 29 at pp.52-53, Aickin J., with whose judgment Barwick C.J., Stephen, Mason and Wilson JJ. all expressed agreement, wrote:-
"Notwithstanding the undoubted fact that the doctrine of Clark v Adie (1875) L.R. 10 Ch. App. 667 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 make 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. (1977) 51 A.L.R. 525 at 530; 14 A.L.R. 149 at 157, and need not be repeated here".
(See also Beecham Control Group Limited v Bristol Laboratories Ltd. (1978) R.P.C. 153 at p.200).

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. Limited v Worrel (1961) 106 C.L.R. 588 at p.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. As Lord Diplock (with whom the other members of the House of Lords agreed) commented in Catric Components Limited v Hill & Smith Limited (1981) 7 F.S.R. 60 at pp. 65-66):
". . . . a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called "pith and marrow" of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. . . . ".

In the light of these principles it is necessary to construe the claims and to see whether the respondents' machine has taken the essential integers of what the patentees saw fit to claim. For the purpose of this Appeal it is, we think, sufficient to consider in detail only claim 1. All the other claims which are alleged to be infringed incorporate claim 1 and a decision on claim 1 will dispose of the matters which have been argued before us.

In one of the exhibits claim 1 is conveniently set out in lettered paragraphs as follows :-
"Claim 1 of Patent 487,810

1. Apparatus for planting sugar cane comprising (a) a planting unit having a relatively small bin (as hereinbefore defined) for receiving a supply of randomly orientated sugar cane billets,

(b) a conveyor having a plurality of conveyor elements mounted at spaced locations on an endless support means which is arranged to be driven at a rate proportional to the progress of the apparatus along a planting path,

(c) the conveyor having a forward run extending upwardly from the bin to an elevated station such that in operation the billets in the bin are taken up by the conveyor elements as they move through the bin,

(d) means for guiding the billets from the elevated station so as to be deposited on the ground with the axis of each billet extending generally in the direction of said planting path,

(e) said bin having a floor at an angle to the horizontal and extending downwardly towards the portion of said forward run of the conveyor which extends through the bin whereby billets fall towards said forward run,

(f) the dimensions and shape of said conveyor elements and said bin being such that in general at least one and sometimes a plurality of billets tend to be taken up by each conveyor element,

(g) means for ejecting surplus billets from the conveyor elements located at an elevated position and causing ejected billets to be returned to the bin,

(h) a relatively large supply container having walls and a floor,

(i) wheel means on which the container can be moved when towed by an associated vehicle, and

(j) conveyor means operable selectively to advance a stream of sugar cane billets from a bulk supply of billets randomly orientated in said container to said bin, there being provided

(k) means for mounting said supply container for co-operation with the planting unit whereby in use billets reaching the top of the conveyor means are dropped into the relatively small bin, and

(1) the size and shape of the bin being such that when filled normally the billets can move relative to one another in the bin as billets are taken up by the conveyor elements, a supply of billets sufficiently orientated relative to the longitudinal direction of the conveyor elements being available to be taken up by the conveyor elements."

The first element in the claim (para (a)) is "a planting unit having a relatively small bin . . . . for receiving a supply of randomly orientated sugar cane billets". The phrase "relatively small bin" is defined in the specification as follows:-
The term 'relatively small supply bin' is hereby defined as meaning that the weight of sugar cane billets capable of being contained when supplied with random orientation in the bin and filled to a normal maximum level is small compared with the weight of one ton".
In relation to this bin the specification states that it is thought that by limiting the weight of billets within it, effective orientation of the billets is possible in part due to the tumbling action induced in the mass of billets on operation of the conveyor.

The claim then proceeds to describe in detail the conveyor which extends through the bin, its relation to the bin and the floor of the bin which slopes towards the conveyor. We think it is important to note that in this portion of the claim (paras. (b) to (g) inclusive) the patentee is at pains to describe in detail the nature of the conveyor whereas when "conveyor means" are mentioned subsequently, no such detail is provided. It is also important to note that the conveyor as described extends upwardly from the bin so that in operation the billets in the bin are taken up by the conveyor elements as they move through the bin (see para. (c)).

The element which the claim then describes is a "relatively large supply container". This expression is obviously used in contra distinction to the "relatively small bin". This container has "walls and a floor". It does not in terms state that the walls extend on all sides of the container. The verb "to contain" in the Shorter Oxford Dictionary is defined as including "to hold together, to keep under control, restrain, - restrict, confine". "Container" is not separately defined but obviously includes a thing which has that effect. We do not think the word "container" necessarily requires something which has all its sides enclosed. It is, however, plain that the small bin and the supply container are two quite separate elements in the claim.

According to the claim the apparatus also has "wheel means on which the (supply) container can be moved when towed by an associated vehicle". We find it difficult to regard the existence of wheel means of this character as essential to the claim. This part of the claim could, in our view, properly be regarded as satisfied by provision of means whereby the relatively large supply container can move in co-operation with the planting unit by, for example, being attached to it. The concept of the supply container being "towed" on "wheel means" tends, however, to emphasise that the small bin and the supply container are separate elements in the claim.

Much of the argument surrounded the meaning of the next element in the claim, that is to say, "conveyor means operable selectively to advance a stream of billets from a bulk supply" in the relatively large container to the relatively small bin. We have already noted that the claim does not describe at length the conveyor means as it does the conveyor which operates within the relatively small bin. It does, however, describe the conveyor means by reference to function, that is to say, "to advance a stream of sugar cane billets" from a bulk supply in the container to the bin. Obviously this can be achieved by a conveyor of the type previously described in the claim. Needless to say, if a strict meaning is to be given to the word "conveyor", it would be construed as requiring an apparatus on which the billets are carried from the container to the bin. We are, however, of the view that the phrase "conveyor means" would cover any mechanism which is operable selectively and has the effect of advancing billets from the container to the bin. A mechanism such as a hydraulic arm tilting a container could conceivably answer this description. Again, however, the concept of the connection between the small bin and the supply container being by way of "conveyor means" serves to underline the separate nature of the two.

The final part of the claim which calls for comment is that there be means for mounting the container for co-operation with the planting unit whereby in use billets reaching the top of the conveyor means are dropped into the relatively small bin. Here the debate surrounded the word "top", it being argued that this indicated that what was in mind was a conveyor similar to that depicted in the drawings which are part of the specification, the top being the uppermost point over which the billets are carried from the container and dropped into the bin. However, we are of opinion that the word "top" when used in relation to a conveyor could describe that part of such a mechanism from which the billets drop into a bin even if it be for some reason horizontal or downwardly inclined towards the smaller receptacle. It is, in any event, doubtful whether this represents an essential element of the patentees' claim in which case a mechanical equivalent adopted by another party may not save that party from being held to have infringed.

In the Supreme Court, Connolly J. held there had been no infringement because the Binder machine does not have two quite separate containers. In addition to the terms of actual claim (see above) he placed some reliance upon the following passage in the patent specification:-
"The present invention is based on the concept of delivering a large supply of sugar cane billets, for example, of the order of one ton or more, into a supply container which has conveyor means operable selectively during a planting operation to advance the billets to fall into a small supply bin which co-operates with a conveyor of a planting unit".
His Honour's view as to the importance of the quite separate nature of the small bin and the supply container appears from the following passage from his judgment:-
"One must read the claim as a whole and so read, together with the body of the specification, it defines, on its proper construction, an invention in which the containers are deliberately separated for the purpose of ensuring that an unacceptable weight of billets is not held in the small bin from which the billets are taken up by the discharge conveyor".

There can be no doubt that reading claim 1 as a whole it describes an invention in which there are two containers quite distinct and separate. The relatively small bin is part of the planting unit. The relatively large supply container is described as having walls and a floor and is represented as being capable of being moved on wheel means when towed by an associated vehicle being connected with a small bin by conveyor means operable selectively and being mounted for co-operation with the planting unit which as has been said includes the small bin.

On the present state of authority, it appears to us that the outcome of the appeal ultimately depends upon whether the quite separate nature of the small bin as part of the planting unit and the large container as an associated receptacle should properly be seen as an essential feature of the invention described in the claim which the patentees formulated. If it is not essential, the use of an equivalent mechanism to produce similar results to those claimed for the patented invention will not prevent the respondents from being held to have infringed. On the other hand, if it be an essential feature and is not present in the machine adopted by the respondents, there will be no infringement. Their machine will be outside the area of the monopoly which the patentees saw fit to claim notwithstanding that it adopts and uses concepts and ideas which are incorporated in the patented invention.

The respondents' machine uses a good deal more of the concept of the appellants' invention than was conceded by the respondents' Counsel. It, nevertheless, appears to us that the separate nature of the small bin and the supply container is an essential feature of the patented invention. As has been seen, the separate and distinct nature of the two appears plainly from the words of the patentees' claim and is emphasised and underlined by the nature and description of some of its elements. We agree with Connolly J.'s conclusion that the separation is a deliberate and essential feature of the actual concept of the patented invention. We are satisfied that the respondents have not adopted that particular feature. It is true that the trough at the front of the defendant's hopper, on the one hand, and the rear part of it with an upwardly moveable floor and rear side, on the other, might if they existed quite separately be properly described as two separate containers. However, when combined as they are in the defendant's machine, they lack this quality. They are, instead, elements of one large container.

It follows that the respondents have not infringed the patent and that the appeal should be dismissed with costs.