Willmann v Petersen [1904] HCA 32; (1904) 2 CLR 1 (28 October 1904)

This is an appeal from a judgment of the Supreme Court of Queensland, reversing a judgment of Power, J. in favour of the plaintiff, and directing judgment to be entered for the defendant. The action was brought for an injunction to restrain the infringement of two patents, Nos. 4799 and 5289, granted in 1899 and 1900, for inventions respectively described as "an improved cane-truck dray" and "improvements in cane-truck drays," and for damages.

The object of both inventions was to facilitate the carriage of sugar cane from the field to the mill. Cane, as we all know, is grown in large fields, from which it is conveyed to mills where the juice is extracted. The weight of the cane is considerable, and the handling of it for the purpose of loading the trucks on which it is carried involves a large expense for labour, one of the principal causes of expense being the necessity for transporting the heavy cane over the soft and often uneven surface of the fields without the advantage of formed roads. In order to minimise this difficulty, it has long been a common practice to lay down main tram roads in various directions through the fields, and to use, in addition, portable tram lines, which can be moved from place to place, as feeders to the main lines. But it was still necessary to convey the greater part of the cane for a considerable distance before reaching the nearest place to which trucks fitted for running on rails could be brought to receive it. This was sometimes done by hand, and sometimes by means of a dray, in which case a second handling was necessary for loading the cane into the trucks. The plaintiff claims that he conceived the idea of combining the advantages of an ordinary vehicle, with tired wheels capable of being taken over uneven surfaces away from formed roads, with the advantage of a vehicle with flanged wheels designed for running on rails.

The complete specification for patent No. 4799 sets forth that the invention relates to "a special make of dray consisting of a frame of iron and wood and cranked axle, the front and back ends being constructed of iron and conforming to the same shape as the axle, and the sides of hardwood. Mounted upon the frame longitudinally are two lengths of tram rail set to the same guage as the tram lines on the cane field: the whole is mounted upon wheels about 10 feet apart, allowing a clear space of about sixteen inches between the underside of the frame-work and the ground. Shafts are provided, and to the cross-bar at the heel of the shafts a windlass is fixed, with chains and hook for hauling up on to the dray the cane-truck, and lowering same when loaded. On the inner side of the wheels each side of dray is a platform with a few steps leading therefrom to provide easy access thereto." The object of the invention is stated to be "for carrying the empty trucks from terminus of tram lines in the field to the locality of the cut cane, and when loaded, for conveying the same back again." The specification then goes on to describe in detail the construction and mode of use of the appliance, and claims "The combination and arrangement of parts forming my improved cane-truck dray substantially as herein described and illustrated by drawings." The actual vehicle may be described as a low dray with wheels about 10 feet apart, upon which were to be fitted tram rails at the same guage as that used on the tram lines in the cane-fields. The cane-truck was to be hauled up by a windlass on to the rails in the dray, which was then drawn by horses to the field, where the cane was loaded directly into the trucks. The dray was then to be drawn back to the tram line upon which the loaded truck was to be let down by means of moveable rails.

The complete specification of patent No. 5289 sets forth that the invention relates to "improvements in cane-truck drays, and forms modifications of my improved cane-truck dray, for which I have obtained letters patent No. 4799 dated 13/2/99, and consists of either a two wheeled or four wheeled dray, the frame work in the two wheeled dray being constructed of either wood or iron, upon which are bolted or otherwise fixed two tram rails, and in the four wheeled dray tram rails serve as part of the frame work, the whole mounted upon suitable wheels and axles." Then follow detailed explanations of the mode of construction and use, and the claim, so far as material, is for "improvements in cane-truck drays a rectangular frame mounted upon a pair of wheels in combination with two lengths of tram rails secured to the frame and a pair of shafts mounted upon iron stanchions above the level of the frame as herein described and illustrated by drawings."

The defendant denied the alleged infringement. He also denied that the alleged inventions were the subject matter for a patent, or that they were new or useful. At the trial before Power J., that learned Judge found all the issues in favour of the plaintiff, and gave judgment for an injunction with respect to both patents, with £4 damages. He adopted the language of Lindley L.J., in Gadd v. Mayor of Manchester[1]:—"A patent for the mere new use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties, is bad, and cannot be supported. If the new use involves no ingenuity, but is in manner and purpose analogous to the old use although not quite the same, there is no invention ... On the other hand, a patent for the new use of a known contrivance is good and can be supported if the new use involves practical difficulties which the patentee has been the first to see and overcome by some ingenuity of his own;" and applied them as affording a test to determine whether the plaintiff's invention was new. Evidence had been adduced on the issue of anticipation, which showed that in two instances in Queensland, before the date of the patents, vehicles fitted with flanged wheels had been carried along roads upon other vehicles on which rails had been temporarily fixed for their accommodation. The learned Judge thought that the plaintiff had applied a known contrivance to a new use which was distinctly out of the track of any former use, and had obviated certain difficulties in the carriage of heavy loads of sugar-cane over rough country in such a serviceable manner as to display inventive ingenuity. The learned judges who sat in the Full Court thought that the alleged inventions were not the subject matter of patent. The Chief Justice thought that the plaintiff had not discovered anything more than that, by using known appliances in a manner completely analogous to the ways in which they had been previously used, an economy could be effected, and that the new use of the appliance did not involve any ingenuity in overcoming fresh practical difficulties, since that use would be obvious to any person who entertained the idea that it would be cheaper than the old method. Real J., thought that the learned Judge of first instance was of opinion that the mere application of a known contrivance to a purpose other than that to which it had before been applied entitled the plaintiff to succeed; and he proceeded to show (and we quite agree with him) that such an opinion is erroneous. We are not at all sure, however, that this was the ground of the decision of Power J. Real J., had some difficulty in distinguishing the case from the recent case of Heine, Solby & Co. v. The Coninco Incandescent Light Co.[2] decided by Farwell J., which was a case of an adaptation of an old idea to a new purpose, but he regarded that decision as unsatisfactory. For our part we see no reason to doubt that it was rightly decided.

The learned Judges, in the view which they took of the case, had no occasion to distinguish between the first and second patents. In the view which we take of it, however, it is necessary to examine both in some detail. We will deal first with patent No. 4799. The claim in this case is expressly made for the combination as described in the specification, and it is not suggested by the specification that there is anything novel in the mere idea of fitting to the frame of an ordinary vehicle rails upon which another vehicle may rest. In considering whether the substance of an invention has been taken by an alleged infringer, the first step in the inquiry is to ascertain in what that substance consists. In Consolidated Car Heating Co. v. Came[3], Lord Davey, delivering the judgment of the Judicial Committee, said[4]:—"In determining the question whether the substance of the invention is taken, it is important to consider the position of the patent with reference to the previous knowledge on the subject. For, if the merit of the invention consists in the idea or principle which is embodied in it, and not merely in the means by which that idea or principle is carried into effect, a machine which is based on the same idea or principle may still be an infringement, although the detailed means adopted for carrying it into effect may be somewhat different"; and again, after referring to the claim made by the inventor (Sewall) in that case, who did not claim that his patent was a pioneer patent: "Giving Sewall full credit for having solved a problem which his predecessors had failed to solve, he cannot be said to have embodied any new idea or principle in his invention. The merit of it lies in the new combination of known features, and the fact remains that the use of the rib was a very material element in the commercial success of Sewall's solution of the problem. It is not proved that his coupler would have achieved that success without it, or that he ever contemplated the omission of it in operating his invention." The alleged infringement consisted in the use of the combination without the rib.

In the present case it is clear that the merit, if any, of the plaintiff's first invention as claimed did not consist in the idea or principle, but merely in the means by which it was to be carried into effect.

In order, therefore, to prove an infringement it would be necessary to show that the defendant had used a cart or machine which, in the words of Lord President Inglis in Gwynne v. Drysdale[5], cited with approval by Lord Davey at page 517 of the case last quoted), "contains all the essential and characteristic features of the patented combination." The evidence in the present case failed to establish any such fact. So far, therefore, as the first patent is concerned the plaintiff's case fails on this ground, and it is unnecessary to further consider the validity of that patent.

Before considering the second patent it will be convenient to state the principles of the law by which its validity must be ascertained. A great number of authorities were cited to us in the argument, most of which were rather instances of the application of accepted rules to the particular facts of the case than expositions of the law. Of those which can be regarded as affording a statement of principles of law, it is only necessary to refer to two or three. In Crane v. Price[6], a case of a patent for a combination, Tindal C. J., delivering the judgment of the Court of Common Pleas (consisting of himself and Coltman, Erskine, and Maule JJ.) said[7]: "We are of opinion, that if the result produced by such a combination is either a new article, or a better article, or a cheaper article, to the public, than that produced before by the old method, such combination is an invention or a manufacture intended by the statute, and may well become the subject of a patent." In Harwood v. Great Northern Railway Co.,[8] Lord Westbury L.C., said, in moving the judgment of the House of Lords[9]: "No sounder or more wholesome doctrine, I think, was ever established, than that which was established by the decisions which are referred to in the opinions of the four learned Judges who concurred in the second opinion delivered to your Lordships, namely, that you cannot have a patent for a well known mechanical contrivance merely because it is applied in a manner or to a purpose which is analogous to the manner or to the purpose in or to which it has hitherto been notoriously used." In Lane-Fox v. Kensington and Knightsbridge Electric Lighting Co.[10], Lindley L.J., said[11]:

These cases in our opinion establish the following proposition (which when enunciated from the bench during the argument, was assented to by counsel on both sides):—A combination of two or more known mechanical appliances the result of which is to effect a new purpose, or to effect an old purpose with greater efficiency or economy, may be the subject-matter of a patent, if it involves some substantial exercise of the inventive faculty. We proceed to apply this test to the plaintiff's second patent. Upon a fair construction of the specification as a whole, we think the invention claimed is a mechanical contrivance for rendering a section of a tram line portable so that it can be connected with or detached from a corresponding tram line laid on the ground, on which the trucks may be conveyed by steam or horse power to the mill; the essential and characteristic feature of the contrivance being that the tram rails are themselves a part of the structure of the vehicle. This is, in substance, a combination of the ordinary mechanical appliance of a cart running on tired wheels with the mechanical appliance of flanged wheels running on rails. The purpose which, according to the evidence, it effects is, perhaps, not a new use or purpose in the sense in which that term is used in the cases, but merely the old purpose of carting heavy crops from the field. But, also according to the evidence, it serves that purpose with greater efficiency and economy than any previously known combination, effecting, indeed, a saving of from sixpence to one shilling a ton in the cost of handling cane.

Then, was there any substantial exercise of the inventive faculty? This is a question of fact on which different minds may well come to different conclusions. The very fact that no one had before thought of the contrivance leads a long way towards an affirmative conclusion. On the whole we think that there was. The idea is no doubt extremely simple, and one is apt, as Lord Herschell said, to be led astray by the extreme simplicity. But it by no means follows that, because a thing looks so simple when achieved, it was a simple thing either to conceive the idea orto devise the mechanical means necessary for the achievement. We, therefore, think that the second invention was the proper subject-matter of a patent. This view that the plaintiff's second invention consisted in a combination of old appliances to a new use does not seem to have been much pressed upon the Supreme Court. Cases were indeed cited on the subject of inventions consisting of combinations of old appliances, but the argument seems to have been mainly used with regard to the windlass which formed part of the combination claimed under the first patent. This was not pressed before us, and manifestly nothing could be made of the point.

We pass to the question of anticipation. On this point the defendant adduced evidence which, he contended, showed the prior use in Queensland in two instances of a contrivance substantially the same as the plaintiff's invention. He showed that some years ago in Brisbane, the manufacturer of a passenger car for use on a tram way, had conveyed it from the factory through the streets to the tram way upon a lorry on which two rails had been temporarily fixed at the proper gauge, the car having been hauled up on to the lorry by means of a crane. He also showed that some years ago, the owners of a plantation near Mackay, which was intersected by a public road, on each side of which they had laid down tram lines, the ends of which were only separated by the road, had adopted a somewhat similar device for conveying their cane-trucks across the road from one tram line to the other. For this purpose they constructed low embankments at the extremities of the tram lines to raise the trucks to a convenient height above the ground. On a frame fixed on tired wheels, they built up a foundation for tram rails which were laid upon it at the same height from the ground as the rails at the extremity of the two embankments. They then hauled the vehicle with the trucks upon it, to and fro, from one terminus to the other, thus making in effect a moveable extension of the tram lines so as to make them communicate with each other. The contrivance in this instance seems to have been substantially identical with that of the ordinary turntable in use on railways and tramways, the only difference being that the moveable platform was moved longitudinally instead of being turned on a pivot. In both instances the purpose was merely to convey vehicles fitted with flanged wheels from one place to another, in an ordinary vehicle fitted for running on made roads. The main purpose of the plaintiff's invention, on the other hand, is to enable such vehicles to be taken economically and efficiently to any place where a tired vehicle can be taken. Assuming that this is a merely analogous purpose to that already known, we think that the novelty in the mode of the combination, resulting in increased efficiency and economy, is sufficient to bring the invention within the rule. We think, therefore, that the defence of anticipation fails.

The question of infringement does not seem to have been substantially contested at the trial. This is partly to be accounted for by the fact that the plaintiff's two inventions were treated together, and were assumed to cover all vehicles adapted for carrying cane-trucks fitted with tired wheels to and from the field. The alleged infringement consisted in the affixing of a section of tram rails to a vehicle known as a Yankee wagon, which consists of a mere frame-work or under-carriage borne on four wheels, and very lightly and strongly constructed. But, if the view already expressed of the true character of the plaintiff's second invention is a correct one, it is obvious that the defendant's wagon with the rails so affixed was a mere colourable departure from the plaintiff's method of making them part of the implement itself.

On the question of utility as well as on that of infringement both Courts were agreed, and it is not necessary to add anything on that point.

For these reasons we are of opinion that the appeal should be allowed, and the judgment of Power J., restored so far as it relates to patent No. 5289. In the result the plaintiff is substantially successful, but the judgment must be varied by omitting the reference to patent No. 4799, and by limiting the award of costs to the plaintiff by depriving him of costs so far as they were increased by his claim in respect of that patent. The appellant must have his costs of the appeal to the Full Court, and of this appeal, but not including the costs of the motion for special leave, which was unnecessary.

I also am of opinion that this appeal must be upheld. Concurring as I do in the judgment of my learned brothers, it is unnecessary for me to do more than deal with the one point in the case which has caused me any difficulty, that is to say, whether the plaintiff's invention is such as to legally justify the issue of a patent. Having regard to what is described and claimed in the plaintiff's first patent, I agree with the Chief Justice that there is no evidence of an infringement of that patent. The matter substantially in controversy is the validity of the second patent, and it is to that I shall address myself. Now, what are the essential features of the invention as claimed in that patent? A dray carrying a rail bed, on which is fixed a pair of tram rails set to the same guage as the cane-field line. On these rails rests a truck ready equipped for running on the tram line. The dray is specially constructed for carrying the loaded truck over the rough ground of a cane field, and contains appliances fixed on itself for taking the empty truck from the tram line and placing the loaded truck back on the tram line. The whole apparatus is, as it has been described, "an agricultural implement" intended to convey sugar-cane loaded in the tram truck from the place of cutting in the field to the tram line without a second handling. The question for our consideration is, does the invention so claimed fulfil all the conditions necessary for a valid patent. The law bearing on the case is clear and well established. It would be, I think, difficult to state it in fewer words than in the proposition suggested by the Chief Justice during the argument and embodied in his judgment, namely, "A combination of two or more known mechanical appliances the result of which is to effect a new purpose, or an old purpose with greater efficiency or economy, may be the subject-matter of a patent if it involves some substantial exercise of the inventive faculty." Amongst the numerous decisions quoted by counsel before us, there are two which better than any others illustrate between them every element of this proposition. One is the judgment of Lord Justice A. L. Smith, who, in delivering the judgment of the Court in Brooks v. Lamplugh[12], says:—"It by no means follows that a patent is bad because an old well-known mechanical contrivance has been brought into use by a patentee. If it were so, very few patents at the present day could be upheld. We think the law upon this subject may be stated thus:—Although there cannot be a valid patent for a well-known mechanical contrivance merely, when it is applied in a manner, or to a purpose, which is not quite the same, but is analogous to the manner, or the purpose, in or to which it has hitherto been notoriously applied (we quote here the words of Lord Westbury in Harwood v. The Great Northern Railway Co., and the same will be found again repeated by the House of Lords in the case of Morgan v. Windover27 R.P.C., p. 131.), yet there may be a valid patent, although well-known mechanical contrivances are used, if they are applied in a manner or to a purpose to which they have not been hitherto applied, and which new application results in a new and useful article not theretofore attained. In the first case there is no room for invention; that is, there is what is called no subject-matter. In the second there is room for invention, and if the Court comes to the conclusion that there has been invention in what has been done, then there is good subject matter, and it is no answer to say that, an old well known mechanical contrivance has been used in bringing about the novel and useful result attained." The further illustration of the proposition is to be found in the following words of the judgment of Lord Chief Justice Tindall in Crane v. Price[14], another portion of which has been quoted by the Chief Justice. "There are numerous instances of patents which have been granted where the invention consisted in no more than in the use of things already known, and acting with them in a manner already known, and producing effects already known, but producing those effects so as to be more economically or beneficially enjoyed by the public." The application of this law to the facts under consideration is in some particulars quite clear. There is nothing new in the combination of the dray and the rail bed carrying a truck on rails. Before the date of plaintiff's patent, it had been used at Homebush by the Colonial Sugar Company, under the circumstances stated by the Chief Justice for the conveying of loaded cane-trucks across a railway line—a distance of little over a chain. It had also been used in Brisbane by one Babbidge, for the conveying of completed tram cars from the place they were built, along a metal road to the tram line on which they were to run. But the plaintiff contends that the merit of his invention consists in the application of this well known combination to a new purpose, or, if not to a new purpose, then to an old purpose with the result of greater efficiency and economy. In my view he has established both branches of that contention. It is, perhaps, unnecessary to decide upon the first branch as he has completely established the second branch of his contention. It is clear on the evidence that the plaintiff's combination has reduced the cost of harvesting the sugar-cane by from sixpence to one shilling a ton of cane. That, I take it, is the best possible proof that his combination has resulted in "greater efficiency and economy" in the process of sugar-cane harvesting. There now remains the test of validity contained in the latter portion of the Chief Justice's proposition, and it is the one in respect of which I have found most difficulty in applying the law to the facts of this case—namely, did the application of the combination of dray, rail-bed, rails and truck, in such a way as to obtain the result of more efficient and more economical cane harvesting, involve a substantial exercise of inventive faculty. Nothing is more difficult than to determine, even roughly, the extent to which inventive faculty has been exercised in attaining a result such as this. Frequently, it is the one further step which makes all the difference between the old cumbrous method, and the new. That step, when taken, may appear simple, and even obvious, but then we are necessarily judging after the event. The difficulties surrounding the determination of such an issue, as well as a safe and reasonable guide in investigation, is to be found in the judgment of Lord Justice Fitzgibbon in Pirrie v. York Street Flax Spinning Co.[15], in which he says: "Next in order comes the serious question of the adequacy of the subject-matter of the patent, or in other words, the question whether the plaintiff has displayed in his invention such an amount of ingenuity as to render him a meritorious patentee. If his invention is novel, and is of mercantile value and utility, that goes a long way to prove his ingenuity, because he has produced a desirable result that nobody ever attained before. I have already referred to the evidence which he gave of study and experiment, and to the evidence of others, who prove that there was a known difficulty to be overcome, a known advantage to be attained, and that several who had experienced the difficulty had been trying to overcome it in different ways, and had not succeeded. The mercantile value of the plaintiff's invention is both the proof and the measure of the extent to which he advanced beyond all previous inventors; and the more of them who tried it, and the farther he advanced upon their efforts, the more clear is the inference that he must have possessed and exercised an amount of ingenuity greater and more meritorious than that of his predecessors. Upon such a subject, lawyers and judges, who are not mechanics, should be slow to deny ingenuity, or to minimise the merit of a mechanical discovery." It seems to me that the method of inquiry used by Lord Justice Fitzgibbon in that case might well be applied to this. We begin with this fact. The saving of double handling in the harvesting of cane was a result the achievement of which was of considerable mercantile value, quite sufficient, one would suppose, to stimulate the inventive faculties of the mechanical experts and farmers engaged in the industry, and yet for years the old methods were followed involving unnecessary expenditure until the plaintiff invented his cane-truck dray. The question naturally arises, if there was no substantial exercise of inventive faculty involved in the plaintiff's combination, how is it that no one attempted to use the combination before? Again, the plaintiff himself was a skilled mechanic living and working for some years in a sugar-growing district. That he had applied his mind to the question of economical cane-harvesting is apparent from the fact that he had taken out a patent for a cane-harvesting dray which had been commercially successful, and also, for a crane for loading cane in the field into drays, and from drays into railway-trucks. In 1887, the idea first occurred to him of taking the truck by dray to the cane in the field. In 1894 or 1895 he thought out in a general way the form of dray that would effect that object. But it was not until the end of 1898 that he devised the details of the combination embodied in his first patent, which he took out in the following year. All this is evidence of inquiry and investigation of the difficulties to be solved in attaining the object which the plaintiff's invention has achieved, and the fact that, with the stimulus of a substantial pecuniary advantage awaiting the discoverer of a solution of the difficulties, the plaintiff himself did not, in the course of his experiments and investigations, solve them earlier, is, I think, under the circumstances some evidence that the solution was at all events not on the surface. That there were difficulties to be overcome in the carrying of a loaded cane-truck, resting only by its wheels upon rails over and through the various inequalities of surface to be met with in a cane-field must be apparent. To combine strength, stability, lightness, and the proper height above the ground in a vehicle which would require in the working of it no more labour or horse power than was economically possible, was the only way of overcoming these difficulties. It may be that no great mechanical skill or ingenuity was necessarily involved in the plaintiff's combination. But it effected the purpose—it overcame the difficulties. Experts, whose evidence seems to be trustworthy, and who were believed by Mr. Justice Power who heard their evidence, have said that the invention involved considerable ingenuity. Under these circumstances, I cannot avoid coming to the conclusion that the plaintiff's combination of known appliances to attain a known result in a more efficient and economical way than heretofore did involve a substantial exercise of the inventive faculty. Holding the opinion, which I have already expressed, that the plaintiff's patent fulfils all the other conditions of validity laid down in the proposition of law enunciated by the Chief Justice, I have came to the conclusion that the plaintiff's second patent is one in respect of which letters patent may legally issue. As it is clear that there has been an infringement of that patent by the defendant, I am of opinion that, on the whole case, the plaintiff is entitled to the damages and injunction awarded him, that the judgment of Mr. Justice Power should be, with the exception mentioned by the Chief Justice, restored, and the appeal upheld. As to costs, I agree with the judgment of the Chief Justice.

Appeal allowed. Judgment of Full Court reversed. Judgment of Power J., restored with costs of action except so far as they were incurred by the claim in respect of Patent No. 4799. Respondent to pay costs of appeal to the Full Court and of this appeal.

Solicitors for the appellant, Atthow & McGregor, Brisbane, for H. B. Wright, Mackay.

[1] 9 R.P.C., 516, at p. 524.

[2] 21 R.P.C., 202.

[3] (1903) A.C., 509.

[4] (1903) A.C., p. 519.

[5] 3 R.P.C., 65.

[6] 4 M. & G., 580.

[7] 4 M. & G., pp. 602-3.

[8] [1865] EngR 708; 11 H.L.C., 654.

[9] 11 H.L.C., p. 682.

[10] (1892) 3 Ch., 424.

[11] (1892) 3 Ch., pp. 428-9.

[12] 15 R.P.C., p. 33, at p. 48.

[13] 7 R.P.C., p. 131.

[14] 4 M & G., 580, at p. 603.

[15] 11 R.P.C., 429, at pp. 443-4.

High Court of Australia

Willmann v Petersen [1904] HCA 32; (1904) 2 CLR 1 (28 October 1904)

HIGH COURT OF AUSTRALIA