Walker v Alemite Corporation [1933] HCA 39; (1933) 49 CLR 643 (21 August 1933)

Walker and another Defendants, Appellants; and Alemite Corporation Plaintiff, Respondent.

I regret that I feel constrained to the view that the defendant has succeeded in constructing a lubricating appliance which does not infringe the plaintiff's monopoly although it contains many points of resemblance to one of the components of the plaintiff's implement. The problem in cases of this kind is clearly stated by Astbury J. during the argument in Rondo Co. v. Gramophone Co.[1]:—"A patent can be either for improving something or for producing a new thing for the first time. There is always a wide distinction in cases where the inventive step is an improvement of detail, as distinct from a novelty per se. Where the details constitute the invention, if one does not take the details one does not take the invention. That is the Curtis v. Platt1(1876) 3 Ch. D. 135 (n). case. In the other case the details are only incidental, they are of little importance, excepting that there must be a way shown of doing the particular thing claimed." The question entirely depends upon the claiming clauses in the plaintiff's specification. I find it impossible to construe the first claim, which seeks independent protection for the cup or nipple, in the manner contended for by the respondent. The pin which confines the spring and extends through the walls and projects outwardly therefrom appears to me an essential part of the combination. The appellant's article cannot be regarded as a mere mechnical equivalent or colourable imitation because, however unimportant the variations may be from the point of view of function, the inventor in his specification has chosen to make the mode of construction an essential ground of his monopoly. The attempt to support the judgment appealed from by reference to the claims for the entire lubricating appliance cannot, in my opinion, succeed in face of the authorities which establish that the sale of a component part of a combination claim for an entire machine is not an infringement of a combination (Dunlop Pneumatic Tyre Co. v. David Moseley & Sons Ltd.[3]). I find it unnecessary to enter into more detail in view of the treatment which the matter has received in the judgments of other members of the Court.

This is an appeal from a judgment of the Supreme Court of Victoria restraining the appellants from infringing the respondent's letters patent for improvements in lubricating apparatus. "The apparatus is designed," as the learned trial Judge said, "for the purpose of lubricating various parts of motor cars and other vehicles, particularly such bearings and other parts as are not easily accessible. It consists of three main parts—a grease-gun, a flexible tube and a grease-cup or nipple. The grease is placed in the grease-gun, the flexible tube is connected at one end by a bayonet coupling to the grease-gun and at the other end by a bayonet coupling to the grease-cup or nipple"[4]. The infringement alleged is that the appellant manufactured and sold or offered for sale grease-cups or nipples, not the whole of the lubricating apparatus, claimed by the respondent.

The specification must be construed with reference to the state of knowledge at the time it was published. This is perhaps best stated in the evidence of Mr. W. E. Bassett, a distinguished engineer, upon whose evidence the learned Judge relied:—

The respondent, it is clear, has not put forward any new principle or idea, nor claimed a mode of carrying a principle into effect. Modestly enough, the specification describes the invention as improvements in lubricating apparatus. "The improved grease-cup or the like," according to the specification, "comprises a hollow member having one end flanged inwardly to provide a seat for the closure member which is normally held seated by a spring or the like confined between the closure member and a pin extending from and through a wall or the walls of the hollow member and projecting outwardly therefrom. In its application to a grease-cup or the like, the latter, as well as the pump, has means for coacting with the couplings interchangeably to connect either end of the conduit with the pump and cup respectively so that it is possible to gain access to grease-cups in comparatively inaccessible places." Again, "the novel grease-cup comprises a tubular member ... having the screw threads ... at one end thereof for securing it to a bearing, and the other end thereof being flanged inwardly ... for the purpose of providing a seat for the ball closure. ... This closure is urged against its seat by means of a compression spring ... which is confined between the pin ... and the closure. ... The central portion of my grease-cup is hexagonal in cross-section, ... thereby providing means for receiving the jaws of a wrench to screw the cup into place." The drawings show that the pin extends from and through the walls of the tubular member. The specification states that the description therein contained is a "preferred embodiment of the invention." The pin holds the spring in position against the ball, and its projection beyond the walls of the tubular member forms part of the bayonet coupling. The engineers called for the respondent, Mr. Bassett and Mr. Draffin, both speak of the pin as being mechanically an important feature of the invention. Thus Mr. Bassett deposes:—

The first claim is "a cup or equivalent receptacle for containing grease or the like, comprising a hollow member having one end flanged inwardly to provide a seat for the closure member which is normally held seated by a spring or the like confined between the closure member and a pin extending from and through a wall or the walls of the hollow member and projecting outwardly therefrom." The object of the claim is to delimit the invention, to define what is the new thing that is claimed. Anything that is not claimed is disclaimed. What then is the essence or substance of the invention the subject of claim 1? It is the precise combination and arrangement of the grease-cup specified in the claim. A pin extending from and through a wall or the walls of the hollow member and projecting outwardly therefrom is as essential a feature of the cup as are the hollow member and the closure member or ball held seated by a spring. It is not, however, the law that a person can "escape on the ground of non-infringement simply because he has departed in some particular from the combination which has been chosen by the" inventor. "But of course there must be a limit, and the limit ... must be ascertained by considering really what it is that the inventor claims as the subject of his patent" (Bunge v. Higginbottom & Co.[5]). In the present case, the inventor has tied himself to a form of grease-cup in which the closure member is held seated by a spring retained by a pin extending from and through a wall or the walls of the hollow member and projecting outwardly therefrom.

Unless this construction of the specification is right, then, in my opinion, Alley's specification anticipates the claim. Alley describes a lubricator of the cylindrical type, having a non-return ball valve pressed by a spring against a seat piece secured at the top of the lubricator, and the spring is confined between the ball and the walls and end of the cylinder. The means of securing the pump upon the lubricator is a screw thread, but Alley points out that this method may be modified, and instead of a coarse pitch screw a bayonet or like catch may be used. The appellant in the present case has substituted for a pin extending from and through a wall or the walls of the hollow member and projecting outwardly therefrom, a collar passing round the hollow member (and not through its walls) with pins or lugs projecting outwardly therefrom so as to form a bayonet coupling. The spring is confined between the ball and the walls and end of the cylinder or hollow member.

Consequently in my opinion the appellant's invention is not an infringement of the first claim, but, if it were held to be an infringement of this claim, then, for the reasons already given, the claim is too wide and cannot be supported.

But the respondent also relies upon the infringement of other claims in its patent, claims 4, 5, 6, 7, 8, 9, 10, 11, and 13. These claims are for combinations as a whole, and it is clear that the appellant has not taken any of the combinations so claimed. It was argued that these claims are for coacting devices, each of which is new; that the manufacture of any of the devices is the manufacture of a material part of the invention claimed; and that the restraint of such manufacture does not deprive the public of anything it had before. One answer, if I am right in my construction of the specification, is that the appellant has not taken, in the grease-cup, any coacting device claimed by the respondent. Another is that when a patent is for a combination of various parts, the manufacture of the single parts is no infringement. Such a manufacture is in itself lawful, and knowledge, even on the part of the manufacturer, that the single parts will be used for the purposes of infringement is not enough to render him liable as an infringer (Townsend v. Haworth[6]; Sykes v. Howarth[7]; McCormick v. Gray[8]; Dunlop Pneumatic Tyre Co. v. David Moseley & Sons Ltd.[9]).

In my opinion the grease-cup or nipple made by the appellants avoids infringement of the respondent's patent.

The lubricating implement or device, for which the patent was obtained, contained several parts. The parts are composed of subsidiary devices or expedients, none of which were new. The merit of the invention lies in judiciously applying means already known in the construction of the several parts and in so combining them as to produce an efficient and convenient implement. A grease-cup or nipple is an essential part. Into or through it the lubricant is injected. It is screwed into the orifice of the duct or channel leading to the bearing that requires lubricating and remains in that position. Grease is fed into it under pressure by a grease-gun, the nozzle of which is at the end of a flexible tube. The nozzle consists of a bayonet socket containing a washer or seal. The nipple is provided with projections to engage with and hold the bayonet socket, and, by this means, a junction which will not leak is formed between the grease-cup or nipple and the grease-gun when in use. When out of use the grease-cup is closed by a valve consisting of a ball or the like. A ball within the grease-cup is pressed against the opening by a spring, which yields, when the grease-gun is applied, to the pressure of the lubricant issuing from it. The description which the specification gives of this part of the contrivance calls it an improved grease-cup or the like, and says that it comprises a hollow member having one end flanged inwardly to provide a seat for the closure member which is normally held seated by a spring or the like confined between the closure member and a pin extending from and through a wall or the walls of the hollow member and projecting outwardly therefrom. The purposes of the pin are, according to the evidence, three in number. Its protruding ends serve to engage in the bayonet coupling of the socket. Within the grease-cup, it serves as a seat for the spring which presses the ball to the opening. Its protruding ends also serve to engage a key by which the grease-cup may be screwed into the duct leading to the bearing. The use of a ball, pressed by a spring within, against the mouth of the lubricating conduit to close it as an access for dirt or as an escape for grease was old and well known. A bayonet coupling consisting of projecting pins and bayonet slots as a fastening was in common use in all sorts of appliances. It does not appear, however, that a pin had previously been used for the double purpose of providing the projections and forming a seat for a spring.

In the first claim, the patentee seeks protection for the grease-cup or nipple independently of the lubricating appliance considered as a combination. The specification claims "a cup or equivalent receptacle for containing grease or the like, comprising a hollow member having one end flanged inwardly to provide a seat for a closure member which is normally held seated by a spring or the like confined between the closure member and a pin extending from and through a wall or the walls of the hollow member and projecting outwardly therefrom."

The appellant's grease-cup is designed so as to fit the bayonet socket of the nozzle at the end of the flexible tube of the grease-gun. But the lugs or pins which enter the slots are not formed of a pin "extending from and through a wall or the walls of the hollow member." They are projections from a collar sunken in and fastened round the grease-cup. The ball or "closure member" is not at the end of the cup. The orifice of the cup leads into an antechamber and the valve is in the middle of the cup. Necessarily, the aperture against which it is pressed is not the flanged end but an annular shoulder within the cup. The spring which holds the ball or "closure member" against it is seated on a small loose cone which is based upon or rests against a similar annular shoulder at the other end of the cup.

McArthur J., who tried the action, found that these differences in design were variations deliberately made by the appellant in the hope or expectation of avoiding infringement of the respondent's patent. He considered that, at best, the variations amounted to no more than the adoption of mechanical equivalents and that, in any case, the appellants' cup was a colourable imitation of the patented article. He accordingly held that the first claim had been infringed. I am unable to agree in this conclusion, because I think an essential feature of the claim is the use of the pin to confine the spring and to extend through the walls and project outwardly therefrom. "A claiming clause operates as a disclaimer of what is not specifically claimed, and for such disclaimer there may be reasons known to the inventor but not to the Court" (per Lord Parker, Fellows v. Thomas William Lench Ltd.[10]). It cannot be known, at any rate with certainty, why the draughtsman of the specification should restrict the monopoly he claimed by so definitely including in his description the manner in which the spring is confined between the closure member and the pin extending through and projecting outwardly from the walls. But in such a claim in respect of the nipple as a separate member of the whole combination, common knowledge, and even prior publication, may well have suggested the unwisdom of widening the claim so that it would not depend upon this feature, a feature to which originality might more plausibly be ascribed. The thing claimed is not the mechanical embodiment of a new principle. It is not a particular application 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 function 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 which the thing claimed is taken. They are not other mechanical embodiments of the inventive idea for which 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.

The respondent, however, relied upon the remaining claims of the specification which relate to the appliance considered as a whole, and contended that the manufacture and sale of the grease-cup or nipple involved the appellant in liability for infringing these claims because the grease-cup would or must inevitably be used with the other parts of the respondent's invention. The general proposition under our law was not denied that "where the patent is for a combination there is no infringement in making or selling the separate elements of the combination, even though the manufacturer or vendor knows perfectly well that the separate elements are destined eventually to be combined so as to constitute an infringement" (Terrell on Patents, 7th ed. (1927), p. 161). But it was said it did not extend beyond cases where the separate elements had an independent use, and, at any rate, was not true of cases where the separate element is itself new and has no use except as part of the patented appliance. The appellant does not admit that the nipple is new or that it has no use except as part of an infringing appliance. But, in any event, it is settled law that the exclusive property in a combination invention is not infringed upon by the sale of the components (Townsend v. Haworth[11]); that selling articles to persons to be used for the purpose of infringing a patent is not an infringement of the patent (per Fry J., Sykes v. Howarth[12]); and that sale with a knowledge that the purchaser will use the articles for infringement is not itself an infringement although the vendor gives the purchaser an indemnity: the vendor must have made himself a party to the act of infringement (per Mellish L.J., Townsend v. Haworth[13]; Dunlop Pneumatic Tyre Co. v. David Moseley & Sons Ltd.[14]). Further, in the opinion of Vaughan Williams L.J., it is not enough that the article sold has no other use than a use in the course of what amounts to infringement[15]. The basis upon which these rules rest is that whatever is not included in the monopoly granted is publici juris and may be freely used as of common right. Narrow as this view of what constitutes participation in infringement may appear, it requires us, in my opinion, to hold that the claims 4 to 11 of the specification were not infringed.

Appeal allowed with costs. Order of the Supreme Court discharged and in lieu thereof order that the action be dismissed with costs.

[1] (1929) 46 R.P.C. 378, at p. 386.

[2] (1876) 3 Ch. D. 135 (n).

[3] (1904) 1 Ch. 612; 21 R.P.C. 53, 274.

[4] (1933) V.L.R., at p. 157.

[5] (1902) 19 R.P.C. 187, at p. 198.

[6] (1875) 12 Ch. D. 831 (n).

[7] (1879) 12 Ch. D. 826.

[8] [1861] EngR 675; (1861) 7 H. & N. 25; 158 E.R. 377.

[9] (1904) 1 Ch. 612; 21 R.P.C. 274.

[10] (1917) 34 R.P.C., at p. 55.

[11] (1875) 12 Ch. D. 831 (n).

[12] (1879). 12 Ch. D., at p. 833.

[13] (1875) 48 L.J. Ch., at p. 773 (n).

[14] (1904) 1 Ch., at pp. 616, 620.

[15] (1904) 1 Ch., at pp. 616, 618, 619.

High Court of Australia

Walker v Alemite Corporation [1933] HCA 39; (1933) 49 CLR 643 (21 August 1933)

HIGH COURT OF AUSTRALIA