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High Court of Australia |
INTERLEGO A.G. v. TOLTOYS PTY. LTD. [1973] HCA 1; (1973) 130 CLR 461
Patents
High Court of Australia.
Stephen J.(1)
Barwick C.J.(2), Menzies(3) and Mason(2) JJ.
CATCHWORDS
Patents - Subject matter - Whether claim to monopoly forms part of prior art - Interpretation of claim - Circumstances in &which body of specification may be referred to - Description of invention in claim - Uncertainty - Patents Act 1952-1966 (Cth), s. 40 (1) (a).
HEARING
Sydney, 1972, April 28; May 1-5.DECISION
1973, January 5.
2. Each of the parties markets sets of children's building blocks made of
plastic, brightly coloured and predominantly of cuboid
shape, a feature of
which is that the blocks will interlock securely with one another so that
simple structures may be built with
them. (at p462)
3. The plaintiff's "Lego" blocks are constructed with one or more, usually at
least four, solid, circular, flat topped projections
("primary projections")
on their top surface, the bottom of the block being open and, in all but the
very smallest size block, containing
within the cavity of the block one or
more projections ("secondary projections") each of which takes the form of a
hollow cylinder
reaching down to the open bottom of the block and having an
open end at its extremity. (at p462)
4. These blocks may be securely interlocked when placed directly one on top
of another because the external surface of each secondary
projection within
the open end of the upper block will clamp between opposing external surfaces
of four primary projections on the
upper surface of the lower block. When not
positioned the one directly over the other but rather so that one projects out
over the
base of the other, clamping may still be obtained but this may
involve only two or, in certain positions, one primary projection
being
clamped against the external surface of a secondary projection. In such cases
the internal surfaces of the walls of the upper
block play an essential part
in the clamping process and in the case of the first interlocking arrangement
described above, when
four primary projections are engaged against the
external surface of a secondary projection, those walls add a further clamping
surface
and prevent rotational movement. All these instances of clamping
action I shall refer to as cross-sectional clamping, as distinct
from a
male-female form of clamping. In the case of the very smallest Lego block,
which lacks any secondary projection and has but
one primary projection, it
may be interlocked on top of another block by clamping the open cavity at its
bottom over a primary projection,
thus interlocking by means of a male-female
clamping action ; there also exists a wide, shallow block, rather in the form
of a base
plate, having multiple primary projections on one side and multiple
secondary projections on the other, which because of its shape
permits of
other blocks of conventional shape being interlocked with it either by a
cross-sectional clamping or by means of a male-female
clamping action, primary
projections on the one being inserted into the interior of the hollow
cylinders formed by the secondary
projections of the other. Apart from these
two instances all other interlocking is effected by cross-sectional clamping.
(at p463)
5. The defendant's "Toltoy Brix", said to constitute an infringement, have a
number of primary projections on their top surface,
the interlocking effect in
their case being obtained by the cross-sectional clamping of the primary
projections of a lower block
between the interior of the sides of the hollow
block above it and the sides of a series of partitions within that hollow
which run
across the block at forty-five degree angles to its longer sides and
divide the hollow of the block into a series of small compartments.
(at p463)
6. The infringement complained of relates only to claim 1 of Interlego's
letters patent; likewise it is only claim 1 that is attacked
as invalid in the
defendant's counterclaim. Claim 1 reads :
"1. A toy building set comprising a plurality of hollow(at p464)
blocks open at one face and adapted to be connected together
by means of projections extending from the bottom faces of
said blocks, and wherein some of the blocks are provided with
at least one projection (primary projection) at the bottom face
opposite the open face, and some of the blocks are provided
with at least one projection (secondary projection) arranged
within the cavity of the block, characterised in that the
positions and dimensions of the secondary projections relatively
to the positions and dimensions of the primary projections
are such that, in a pair of assembled blocks the lateral face or
faces of at least one primary projection of one block will be
clamped against the lateral face or faces of at least one
secondary projection of the adjacent block."
7. The complete specification begins by stating that: "This invention
generally relates to toy building sets comprising a plurality
of building
element and, more particularly, to toy building bricks or blocks comprising a
hollow body open at one face and adapted
to be connected together by means of
projections extending from the face of the elements and arranged so as to
engage protruding
portions of an adjacent element when two such elements are
assembled", and goes on to state the principal object of the invention
as
being to provide improved coupling means for clamping toy building blocks
together in any desired relative position ; it refers
to male-female locking
arrangements as being well known in building blocks but says of them that they
fail to solve "the problem
of providing improved coupling means for
interlocking adjacent blocks in a vast variety of combinations". It then
proceeds to offer
a solution based upon such an interrelation of the relative
dimensions and positions of primary and secondary projections that in
a pair
of assembled blocks the lateral faces of at least one primary and one
secondary projection will be clamped against one another.
It is said that the
projections need not be cylindrical in shape but, if they are, an equation is
given defining the diameter of
the secondary projections and of the width of
the cavity of the hollow block. (at p464)
8. After describing the various drawings accompanying the specification it is
remarked that if secondary projections are tubular
it is advantageous that the
cavity within the tube be substantially equal to the diameter of primary
projections so that the previously
known male-female method of assembly may be
combined with the principal feature of the invention, namely the previously
mentioned
arrangement of primary and secondary projections. (at p464)
9. Reference is also made to the part played by the side and end walls of the
hollow blocks in the interlocking of blocks but it
is pointed out that
theoretically it is possible to omit those walls entirely. (at p465)
10. There then follow sixteen monopoly claims, commencing with claim 1 which
I have already set out. (at p465)
11. Although in this case argument ranged over a wide area the action can, I
consider, be disposed of with only passing reference
to a number of the issues
which were debated before me. I have concluded that claim 1 of the plaintiff's
letters patent is defective
and does not entitle the plaintiff to the relief
it seeks in this action but should instead be the subject of an order for
revocation,
as claimed in the defence and counterclaim. (at p465)
12. In explaining the scope of claim 1 counsel for Interlego contended that
the claim was limited to toy building sets which included
in their component
parts several open ended hollow blocks adapted to be connected together by
means of projections extending from
the bottom faces of the blocks, some of
which blocks had one or more primary projections and some of which had one or
more secondary
projections, so placed and of such size that in assembled
blocks, however assembled, the lateral face of at least one primary projection
would be clamped against the external lateral face of a secondary projection.
(at p465)
13. By limiting the claim to instances where clamping involved only the
external lateral face of secondary projections it was sought
to exclude from
the monopoly claimed the feature of male-female clamping action involving the
internal lateral face of secondary
projections and which was, on the face of
the specification, acknowledged to have been at all times a well known
existing mode of
assembly of building blocks. (at p465)
14. Counsel for Toltoys, on the contrary, denied that the claim could be so
limited ; the claim, he said, referred simply to a lateral
face and when a
secondary projection was in the form of a hollow cylinder the reference to a
lateral face applied equally to the
internal as to the external surface of
such a cylinder. The consequence was, he said, that the long familiar
male-female clamping
action was included in the claim which, accordingly, was
much too wide, embracing as it did what the specification itself acknowledged
to be prior art. (at p465)
15. If full recourse can, in this case, be had to the body of the
specification to qualify the meaning of claim 1 the result will
no doubt be
that it may be inferred that claim 1 makes no claim to monopoly so far as
male-female clamping is concerned. The question
is whether the body of the
specification may be used for this purpose. (at p465)
16. In Welch Perrin & Co. Pty. Ltd. v. Worrel [1961] HCA 91; (1961) 106 CLR 588 both
Menzies J. and, on appeal, the Full Court
had recourse to
the body of the
specification for the purpose
of interpreting the claims and resolving
ambiguities and there is no
dearth of authority
for such a course - see Blanco
White's Patents
for Inventions, 3rd ed., p. 51 and Terrell on the Law of
Patents
11th ed., (1965),
p. 67 and cases there cited - so long as the use
made of the body of the specification is to resolve ambiguities
or clarify
that
which is uncertain in meaning. However it is well
established that to go
further and use it so as to restrict, expand
or qualify
what appears in the
claim is wholly inadmissible -
Ingersoll Sergeant Drill Co. v. Consolidated
Pneumatic Tool Co. Ltd.,
per Lord
Loreburn (1907) 25 RPC 61, at p 83 . (at
p466)
17. The general principle which appears to me to emerge from the authorities
is that, although claims must always be read in their
context, clear and
unambiguous wording in a claim is not to be departed from because of
indications culled from the body of the specification.
The claim defines the
invention - Patents Act 1952-1966, s. 40 (1) (b) ; it is the claim which, as
Lord Russell of Killowen said
in Electric & Musical Industries Ltd. v. Lissen
Ltd. (1938) 4 All ER 221, at p 227 ; 56 RPC 23, at p 41 "alone defines the
monopoly
; and the patentee is under a statutory obligation to state in the
claims clearly and distinctly what is the invention which he desires
to
protect." (at p466)
18. As the joint judgment of the Full Court in the Welch Perrin Case
emphasized (1961) 106 CLR, at p 610 , what is to be 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." It was to resolve
ambiguity and obscurity that the body of the specification was resorted to in
that case,
so that, by reading the claim in its context, what was otherwise
unclear became clear. Their Honours went on to recall that it had
often been
insisted that : "It is not legitimate to narrow or expand the boundaries of
monopoly as fixed by the words of a claim
by adding to those words glosses
drawn from other parts of the specification." (1961) 106 CLR, at p 610 . (at
p466)
19. In the present case I think that, due to the form which claim 1 takes,
counsel for the plaintiff was obliged to resort to the
very mode of
interpretation which the authorities repudiate as inadmissible. The claim
refers to "the lateral face or faces" of a
secondary projection, without any
limitation to any particular face. It must necessarily be exclusively in
reliance upon the body
of the specification that the plaintiff seeks to read
down those words so as to avoid a construction admittedly too wide, thereby
restricting them to the external lateral faces of such secondary projections
as are hollow cylinders. (at p466)
20. In Electric & Musical Industries Ltd. v. Lissen Ltd. (1938) 4 All ER 221
; (1939) 56 RPC 23 , neither Lord Russell, who
would
have dismissed the
appeal, nor Lord Porter, who took an opposite view, had any doubt but that, if
claims have a clear meaning
in
themselves, language in the body of the
specification cannot be used to alter that meaning. (at p467)
21. I conclude that the meaning of claim 1 in the presently relevant respect
is quite clear ; it says of those blocks in a toy building
set which have
projections that they are characterized by the respective projections being so
positioned and of such dimensions that
the lateral face or faces of primaries
and secondaries will, in a pair of assembled blocks, be clamped against one
another. The claim
extends to all those cases in which this clamping of
lateral faces occurs. What then is the ordinary meaning of "lateral face"? The
Shorter Oxford English Dictionary gives, as the first meaning of "lateral",
"of or pertaining to the side" and this is, I think,
the sense in which it
should be understood in claim 1. One meaning of the noun "face" is "the
surface or one of the surfaces of anything"
and I think that the phrase
"lateral face" means those surfaces of a projection which are situated on its
sides. (at p467)
22. It emerged from the evidence that the phrase had no special meaning known
to experts in the art. An engineer called on behalf
of the plaintiff said that
"lateral", when used in relation to the face of an object, meant any side face
and that a tubular object
had two lateral faces, the inside and the outside
lateral face. An engineer called on behalf of the defendant described a
projection
of tubular character open at both ends as having two lateral faces,
one outside and one inside lateral face. (at p467)
23. No doubt the reference in the claim to primary and secondary projections
does justify some reference back to the body of the
specification for the
meaning of these terms which are there defined but such a reference back
throws no light upon the meaning of
"lateral face" advantageous to the
plaintiff. (at p467)
24. It is, of course, only where secondary projections take the form of
hollow tubes, cylindrical or otherwise, that the plaintiff
feels the need to
import a limitation into claim 1 so as to exclude a particular type of lateral
face, described as "internal". Thus
it insists that the series of thin
internal partitions, which run from side to side of the allegedly infringing
blocks and whose
lateral faces when in contact with the faces of primary
projections provide the requisite clamping surfaces, do possess two faces
either of which may be used, in conjunction with the faces of other
partitions, for the clamping of primary projections, the plaintiff
drawing no
distinction between them ; an infringement is alleged whichever side is
employed. (at p468)
25. The diagrams numbered as figs. 7 and 8 on the drawings accompanying the
plaintiff's letters patent contain secondary projections
which might be
described as squared-off hollow tubes the sides of which have been slit
lengthwise so that each resultant segment
of the tube forms a distinct
secondary projection in itself. By this lengthwise slitting what otherwise
would be a continuous internal
lateral face has become a series of independent
faces, none of them properly to be described as internal. No doubt many
variously
shaped secondary projections could be devised, some with one
continuous lateral face, some with two or more distinct lateral faces
and some
having lateral faces which might be designated internal ; moreover a lateral
face may be all in the one plane, may curve
in one dimension only, being in a
plane in the other, as in the case of a cylinder, or may curve in all
dimensions, as in the case
of a sphere. When there may be such a variety of
lateral faces there would appear to be little justification for treating the
words
"lateral face" in the claim as inclusive of all but those which happen
to possess the characteristic of being internal, relative
to the secondary
projection of which they form a part. (at p468)
26. This is not, I think such a case as that of which Luxmoore J. spoke when
he said in British Thomson-Houston Co. Ltd. v. Guildford
Radio Stores (1937)
55 RPC 71, at p 88 that it is necessary to introduce into every claim
limitations dictated by common sense after
a perusal of the whole of the
specifications. Nothing his Lordship there said appears to me to justify the
step of reading down "lateral
face" so as to exclude an internal lateral face.
(at p468)
27. For the foregoing reasons I conclude that claim 1 claims a monopoly in
terms which are wide enough necessarily to include toy
building sets in which
some blocks may be assembled together by clamping primary projections against
the internal lateral face of
secondary projections. This is what is referred
to earlier in the specification as part of the prior art and at the hearing of
this
action it was common ground that such a male-female mode of clamping
together toy blocks was not novel. It follows, therefore, that
the subject
matter of the claim extends beyond that which the plaintiff, as patentee, has
in fact invented. (at p468)
28. I am conscious of the fact that, in coming to the conclusion I have, I am
treating the plaintiff as claiming a monopoly which
includes a feature which
it has itself described in the body of the specification as prior art. This,
however, appears to me to be
the necessary consequence of the words of claim
1, just as it was in the case of the words used in the specification
considered in
Kynoch & Co. Ltd. v. Webb (1899) 17 RPC 100 , where Lord Shand
particularly referred to this aspect at p. 110. In Chapman &
Cook
v. Deltavis
Ltd. (1930) 47 RPC 163, at p 175 , Clauson J. referred to the consequence, as
he saw it, of a patentee mistakenly
claiming
a monopoly for a particular form
of thing which earlier in the specification had been recited as common
knowledge ; he would,
he
said, have thereby "recited himself out of Court". In
Sonotone Corporation v. Multitone Electric Co. Ltd. (1955) 72 RPC 131, at
p
140 Evershed M.R., delivering the judgment of the Court, doubted whether
anything in the way of an estoppel against the patentee
could arise in such
circumstances. However, where it is not a matter of an injudicious admission
as to prior art but rather the claiming
of a monopoly in an area which, it is
common ground, is already commonly known and exploited it is clear that such a
claim is bad.
(at p469)
29. I turn now to a quite distinct ground of attack upon the validity of
claim 1. Counsel for the plaintiff said that claim 1 was
drawn so as to define
the invention for which monopoly is claimed by reference to the effect
achieved, there being two elements of
that invention, neither itself novel but
said to be novel when employed in combination ; the first was the
interrelation of primary
projections of one block with secondary projections
of another block, the second was the use of the inherent elasticity of the
constituent
material of which the blocks are made. The proper combination of
these two features is claimed to result in a clamping action and
it is this
which provides the plaintiff's improved means of connecting toy building
blocks. It was said that the internal walls of
the blocks need play no part in
this clamping action and certainly claim 1 makes no reference to any role
which they are called upon
to play ; it is only the projections which the
claim treats as the clamping device. (at p469)
30. Once this is appreciated it becomes apparent that there is a curiosity
involved in claim 1 ; the action of clamping, as instanced
by the example of
the common vice, necessarily involves four surfaces, the two sides of the
object to be clamped and two surfaces
against which those sides may clamp.
Claim 1 however refers only to blocks having at least one primary projection
and at least one
secondary projection, the respective lateral faces of these
projections being clamped ; it does not explain how this clamping effect
is to
be produced. No doubt it is to the body of the specification that resort is to
be had for directions concerning the achieving
of the clamping effect but it
is the claim itself that must describe the area of monopoly claimed ; in the
absence of any definition
of the other two surfaces employed to produce the
clamping effect the monopoly claimed must extend to all cases in which
clamping
takes place between the side of one projection and the side of
another, regardless of how those projections are sustained in their
positions
relative to one another so that the restraint necessary for the clamping
action is produced and maintained. (at p470)
31. The terms of claim 1 may be contrasted, in this respect, with certain
subsequent claims, of which claim 2 provides a convenient
example. In claim 2
projections are said to be cylindrical in shape, the secondary projections
being arranged in the median plane
of the open face of the block, their
diameter within the cavity of the block being determined by the equation
earlier referred to,
which is set out both in claim 2 and in the body of the
specification. Because the secondary projections are stated to project down
as
far as the median plane of the block's open face and because this equation
uses as two known factors the width of the cavity of
the block and the
diameter of the primary projection, the nature of the clamping mechanism is
revealed ; two additional surfaces
are identified, the inner wall of the block
containing the secondary projection and the side of the primary projection
which, because
of the terms of the equation, will come into close contact with
it. The necessary restraint is then exerted because the secondary
projection
is integral with the block, against the inner wall of which one face of the
primary projection will press. (at p470)
32. Accordingly in claim 2 the clamping mechanism is fully described and the
area of monopoly is restricted to instances in which
clamping of projections
against one another occurs and is maintained because of the relationship
between the space existing between
the secondary projection and the inner wall
of one block and the diameter of the primary projection of another block. In
claim 1,
however, no hint is given of how the surface of one projection is to
be clamped and maintained in a clamped state against the surface
of another.
(at p470)
33. The consequence is that claim 1 lays claim to a monopoly in every
instance in which, in blocks with one or more primary or secondary
projections, clamping occurs between a surface of one projection and a surface
of another ; all that is required is that assembly
of the blocks should
produce clamping due to "the positions and dimensions" of one projection
relative to those of the other. The
reference to relative "positions" adds
nothing other than that the two projections must abut, which is self evident
because they
are said to be clamped together ; likewise reference to the
relative "dimensions" of the projections adds nothing by way of any limitation
to the claim. (at p471)
34. If, as was said by counsel for the plaintiff, it is the combination of
two features, interrelation of projections and elasticity
of materials, that
is the invention, the absence of any description of what interrelation is in
question leads to great width of
claim. No doubt, as was exemplified in
No-Fume Ltd. v. Frank Pitchford & Co. Ltd. (1935) 52 RPC 231 , a claim may
validly be
limited
merely by the result to be attained but, as is said in
Terrell on the Law of Patents, 11th ed., (1965), p. 96, this may only
be done
if "the limitation is 'sufficient to characterise the construction of the
article claimed' Mullard Radio Valve Co. Ltd. v.
British
Belmont Radio Ltd.
(1938) 56 RPC 1, at p 16 ." Here the limitation, by reference to the result,
the attaining of a clamping
effect
between two projections, does not
characterize the construction of the toy building blocks. (at p471)
35. In Raleigh Cycle Co. Ltd. v. H. Miller & Co. Ltd. (1946) 63 RPC 113
Vaisey J., at first instance, gathered together a number
of passages from the
cases defining the function of a claim and certain of these, culled from the
judgment of Lord Russell of Killowen
in Electric & Musical Industries Ltd. v.
Lissen Ltd. (1938) 4 All ER 221 ; 56 RPC 23 , Lord Normand described, on
appeal (1948)
1
All ER 308, at p 319 as an authoritative exposition of the
function of the claim in a specification. It suffices, for my purpose,
to
refer specifically to one of these passages, in which it is said (1938) 4 All
ER, at p 224 ; 56 RPC, at p 39 :
"The function of the claims is to define clearly and withIn the present case claim 1 fails in this respect, it nowhere defines with clarity or precision, or indeed at all, the exact boundaries of the area over which monopoly is claimed. On the contrary the matter is left quite indefinite. (at p471)
precision the monopoly claimed, so that others may know the
exact boundaries of the area within which they will be
trespassers."
36. There is here no "rule ascertained and defined by the patentee" which
those who wish to manufacture toy building blocks may
follow, by making no
more than simple experiments, in order to achieve the result claimed in claim
1 - Lord Hanworth M.R. in the
No-Fume Case (1935) 52 RPC, at p 240 citing the
words of Lord Hatherley in British Dynamite Co. v. Krebs (1896) 13 RPC 190 .
No
doubt the patentee is not required to limit the area of monopoly by
reference to specific measurements or specific shapes, but he
must, I think,
condescend to more detail than is provided in claim 1 and must, as Lord
Hanworth says (1935) 52 RPC, at p 241 , provide
a sufficient indication of
what is the area which the patentee asks for as his monopoly. To put the
matter another way and employing
the language of Romer L.J. in that case
(1935) 52 RPC, at p 244 , it suffices if the various integers composing the
invention are
described, together with their manner of arrangement and
relative proportions, so that all that remains to be done is to discover
within what limits those proportions should lie. But in this claim some
relevant integers are omitted and no indication whatever
is given as to manner
of arrangement. (at p472)
37. It follows that this claim does not comply with s. 40 of the Act in that
it does not define the invention and is not clear.
It was said that the
omission of all reference to the walls of a block operated to make inutility,
within s. 100 (1) (h) of the Act,
an available ground of invalidity. This was
so because the claim could not be shown to produce any useful result in the
form of the
assembly of blocks by the clamping together of projections. This
does not, however, appear to me to be a proper conclusion ; as claimed
the
invention is necessarily useful since it is claimed in terms of the result
said to be achieved. It is, rather, the lack of definition
of the invention
and not its inutility that appears to me to be a vice of claim 1. (at p472)
38. The effect of the two distinct criticisms made of claim 1 which I have
discussed and held to be well founded is that the claim
is invalid as alleged
in par. 6 of the defence and in par. 5 of the counterclaim and should be
revoked. This invalidity may be described
as grounded both upon want of
subject matter, alleged in par. 6 of the particulars of objection, and upon
non-compliance with the
requirements of s. 40 of the Patents Act 1952-1966, as
alleged in par. 2, that non-compliance arising because the claim lacks clear
definition of the invention, involves ambiguity and is not fairly based on the
matter described in the specification. (at p472)
39. A variety of other attacks was made by the defendant upon the validity of
claim 1, its defence being, in effect, limited to
the question of validity
since the fact of infringement was not really in issue when counsel came to
address me. Since these were
argued in some detail I propose to deal shortly
with three of these further defences. (at p472)
40. It was contended on behalf of the defendant that the plaintiff's
invention was anticipated by French letters patent No. 1,141,279
which were
first open for inspection in the Canberra Patent Office library on 6th
February 1958. However, the plaintiff claims a
priority date of 28th January
1958 for claim 1, despite the fact that its application was not lodged until
12th January 1959, and
does so because its application was a convention
application to which Pt XVI of the Act applies, claim 1 being said to be
"fairly
based on matter disclosed in" a Danish patent application of 28th
January 1958 and thus gaining priority according to the date of
that
disclosure. (at p473)
41. Two questions are involved ; can claim 1 of the letters patent in suit
take advantage of the Danish priority date, if so no
question of possible
anticipation by the later French letters patent will arise. If not, the second
question would arise, whether
the French letters patent do in fact anticipate
the letters patent in suit. I have found it unnecessary to consider this
second question
since I have concluded, favourably to the plaintiff, that
claim 1 is entitled to the earlier priority date of 28th January 1958.
(at
p473)
42. If a convention application claim is to have a priority date earlier than
the date of application what Pt XVI of the Act requires,
so far as presently
relevant, is that the claim be fairly based on matter claimed or disclosed in
the overseas basic application
- s. 145 (a). Prior disclosure of the
subject-matter, without necessarily its incorporation in the claims of the
basic application,
suffices so long as there has been "a real and reasonably
clear disclosure": F. Hoffman-La Roche & Co. v. Commissioner of Patents
[1971] HCA 3; (1971)
123 CLR 529, at p 539 . Here there was, I conclude, such a disclosure. The
guidance provided by Lloyd-Jacob
J. in Re Mond
Nickel & Co. Ltd.'s Application
(1956) RPC 189, at p 194 as to the meaning of "fairly based", when applied in
comparing
the Danish
application with the letters patent in suit, has
satisfied me that the latter is fairly based upon matter disclosed in
the
former.
(at p473)
43. The defendant made three distinct submissions each based upon one of the
criteria referred to by Lloyd-Jacob J. It was said
that claim 1 was not
broadly described in the Danish application which was confined to a "toy
building element" and did not extend
to sets of elements or blocks, as does
claim 1 ; however although the Danish claims are confined to individual
elements the application
makes repeated disclosure of whole sets of such
elements. Again it was said that there was inconsistency between claim 1 and
the
Danish application since the former, unlike the latter, did not refer to
any role played by the internal walls of blocks in the clamping
process ;
however the references in the Danish application which were relied upon do
not, I think, create an inconsistency, they
are no more than descriptions of
particular clamping effects that may be obtained in certain preferred
embodiments of the invention.
To confine claim 1 to clamping effects produced
without the operation of internal walls of blocks is not to involve any
inconsistency
with the Danish application. Finally it was said that claim 1
included as a characteristic of the invention a feature as to which
the Danish
application was silent, namely that two blocks, one with one primary and the
other with one secondary projection, may
be clamped together. It is true that
the Danish application speaks of a plurality of projections ; however it also
refers to the
wide variety of mutually different positions in which two blocks
may be assembled and one such position would quite obviously be
a position
involving only one primary and one secondary projection, the internal walls of
one block providing the other necessary
clamping surfaces, that being a
function of the walls to which the Danish application specifically adverts.
While the failure of
claim 1 to refer to this function introduces
difficulties, to other consequences of which I have already referred, there
does not,
I think, arise from it any lack of fair basing such as the defendant
contended for. (at p474)
44. I accordingly conclude that claim 1 has properly had assigned to it a
priority date earlier than the allegedly anticipating
French letters patent.
(at p474)
45. The defendant also contended that claim 1 was too wide since it claimed
monopoly for a whole set of building blocks some only
of which might
incorporate the invention claimed. There seems to me to be no vice in this ;
what is claimed is monopoly for sets
in so far as they comprise at least some
blocks having particular features invented by the patentee ; remove those
blocks and the
set will not infringe, include them and the set falls within
the monopoly claimed. (at p474)
46. The defendant submitted that the invention lacked novelty and was obvious
and relied upon evidence that clamping, as a method
of holding two objects
together by the use of the elastic property of materials, had long been well
known. I accept, on this aspect,
the submissions of counsel for the plaintiff
that the evidence discloses that hitherto the interconnexion of two blocks by
clamping,
otherwise than by the simple male-female clamp, was not employed
despite the great advantages which it possesses in the case of building
blocks, as testified to by the success of the plaintiff's blocks. There is
here, I think, no absence of novelty in the sense of anticipation
of the
claimed invention. As to obviousness it has been said that this is, in
essence, "a kind of jury question" Allmanna Svenska
Elektriska A/B v.
Burntisland Shipbuilding Co. Ltd. (1951) 69 RPC 63, at p 70 and in the
present case, having considered those earlier
letters patent dealing with
building blocks which are in evidence and also the evidence of the engineering
experts called by the
parties, I conclude that it was, before the present
claimed invention, by no means obvious to those skilled in the art that
building
blocks could with advantage be linked together by the means referred
to in claim 1. (at p475)
47. Concluding as I do that, although prima facie infringement has been
established, the defendant has succeeded in establishing
that claim 1 is
invalid for the reasons stated, the plaintiff's action will be dismissed and,
on the counterclaim, there will be
an order that claim 1 be revoked. (at
p475)
HEARING
Sydney, 1973, October 30, 31; November 1; December 7. 7:12:19731973, December 7.
The following written judgments were delivered :-dismissal by Stephen J. of its suit for infringement of claim 1 of its Australian letters patent No. 229,550 for an invention for "Improvements in and relating to toy building sets and building blocks" and against an order for revocation of claim 1 of the letters patent. The defendant in the suit was the respondent Toltoys Pty. Ltd. which, like the appellant, is a manufacturer of sets of toy building blocks. The respondent's blocks are known as "Toltoy Brix". (at p475)
BARWICK C.J. and MASON J. This is an appeal by Interlego A.G. against the
2. His Honour arrived at a conclusion adverse to the appellant on two grounds
: 1. that claim 1 was invalid because it claimed a
monopoly in a method of
clamping toy blocks which formed part of the prior art ; and 2. that claim 1
did not comply with s. 40 of
the Patents Act 1952 (as amended) in that it did
not define the invention and was not clear. (at p475)
3. The appellant's patent is for a set of interlocking toy building blocks
adapted for assembly, unlike toy building blocks hitherto
known, in a wide
variety of combinations. The character of the appellant's invention is best
understood by reference initially to
the state of the prior art. (at p476)
4. As the specification itself acknowledges, two different sets of
interlocking toy building blocks formed part of the prior art.
One set
comprised "hollow blocks open at one face and provided with projections
(primary projections) . . . symmetrically disposed
on the face opposite the
open face". The primary projections, arranged in two parallel rows and in
transverse pairs, were uniformly
spaced apart in both directions. The overall
dimension over each pair of projections approximated the width of the cavity
of the
block and the overall dimension over each row approximated the length
of the cavity. The arrangement, which makes use of the walls
of a block as a
coupling agent, enabled two identical blocks to be interlocked in staggered or
offset relation. (at p476)
5. The second set comprised hollow building blocks, also provided with
primary projections on the side opposite the open face and
with projections
set in the open face (secondary projections) arranged coaxially with the
primary projections, the arrangement being
such that the primary projections
were provided with recesses adapted to receive the ends of the secondary
projections of another
block - this being an example of what has been referred
to as male-female clamping. (at p476)
6. The specification then concedes that the building blocks according to the
appellant's invention comprise features of the two
known sets of blocks but it
observes that the mere juxtaposition of primary and secondary projections
would not provide coupling
means for interlocking adjacent blocks in a vast
variety of combinations. It goes on to say that :
"in order to solve this problem the relative dimensions andand
positions of the primary and secondary projections must be
interrelated in a specific manner and according to the main
characterising feature of the invention the positions and
dimensions of the secondary projections relatively to the positions
dimensions of the primary projections are such that, in a pair(at p476)
of assembled blocks the lateral face or faces of at least one
primary projection of one block will be clamped against the
lateral face or faces of at least one secondary projection of the
adjacent block."
7. The illustrations described in the specification show primary projections
placed between the walls and secondary projections
of adjacent blocks or
between secondary projections without the assistance of the walls of the
adjacent block. The illustrations
do not depict primary projections inserted
into the recesses of secondary projections. The body of the specification
refers to this
method of assembly as presenting "an additional advantage when
combined with the principal feature of the invention". (at p476)
8. The point is made that if the secondary projections are tubular it is of
advantage if the cavity within the projection is substantially
equal to the
diameter of the primary projections. The known method of male-female clamping
may then be used in association with the
principal feature of the invention
which consists in the arrangement of the primary and secondary projections.
(at p477)
9. Immediately before the claims the specification states that :
"while all the elements of the building set according to theClaim 1 is as follows :
invention are in the form of hollow blocks . . . open at one face
and while the side and end walls . . . do in most cases cooperate
with the primary and secondary projections in the interlocking
of two adjacent blocks, it is theoretically possible to omit said
side and end walls . . . In fact, two elements . . . consisting
each of a base plate a and primary and secondary projections
but having no side or end walls could be interlocked in various
positions."
"A toy building set comprising a plurality of hollow blocks
open at one face and adapted to be connected together by means
of projections extending from the bottom faces of said blocks,
and wherein some of the blocks are provided with at least one
projection (primary projection) at the bottom face opposite
the open face, and some of the blocks are provided with at
least one projection (secondary projection) arranged within the
cavity of the block, characterised in that the positions and
dimensions of the secondary projections relatively to the
positions and dimensions of the primary projections are such
that, in a pair of assembled blocks the lateral face or faces of at
least one primary projection of one block will be clamped
against the lateral face or faces of at least one secondary
projection of the adjacent block (28th January 1958)." (at p477)
10. When the specification is read as a whole it appears that the invention
consists in a set of interlocking hollow blocks adapted
to be assembled in a
wide variety of combinations by reason of the new and distinctive coupling
method which they incorporate, the
coupling method depending upon the
interrelationship in adjacent blocks of primary and secondary projections, so
that when two blocks
are connected together at least one primary projection
will be "clamped against" at least one secondary projection. It is made clear
that, although in most applications the new coupling method will be used in
association with the side and end walls of a block, the
new method could be
applied without use of the walls, as, for example, in the case of a block
having at least one primary projection
when connected with a base plate having
secondary projections. (at p477)
11. We venture to think that no one would conclude, on reading the
specification as a whole, that the invention as described makes
claim to a
method of assembly of blocks which depends on the insertion of primary
projections into the recesses of secondary projections
in an adjacent block.
However, the settled rule is that in ascertaining the width of a particular
claim it is not permissible to
vary or qualify the plain and unambiguous
meaning of the claim by reference to the body of the specification (Welch
Perrin &
Co.
Pty. Ltd. v. Worrel [1961] HCA 91; (1961) 106 CLR 588, at p 610 ). It is
therefore necessary to examine the language of claim
1. (at p478)
12. The argument that it asserts a monopoly in what is acknowledged to have
formed part of the prior art is based on the proposition
that the words "face
or faces" in relation to secondary projections designate internal surface or
surfaces as well as those which
are external. "Face" may mean surface but to
our mind, when it is used in this sense it refers ordinarily to the external
surface
of an object or to the side which is presented outwards. It is not a
word which is apt to describe an internal surface unless it
is qualified by an
appropriate adjective so as to indicate that it is the internal surface that
is the subject of reference. The
words "face or faces" as applied to primary
projections must refer to external faces of those projections. There is, as we
see it,
no reason to suppose that the expression has a different meaning when
applied to secondary projections. (at p478)
13. Other considerations point the same way. The claim does not specify
hollow or solid secondary projections - either is permissible.
With solid
projections, assembly by the known method cannot be achieved. Resort to the
body of the specification would reveal that
tubular secondary projections are
recommended, but at the same time it would reveal that assembly by the known
method was not the
subject of the invention as described. Next, the expression
"clamped against" as applied to the face or faces of the secondary projection
suggests that the primary projection is held against the external face of the
secondary projection ; it does not immediately bring
to mind the notion that
the primary projection is inserted into a recess in the secondary projection.
In our opinion, therefore,
the claim, construed without reference to the body
of the specification, is not invalid on the ground that it asserts a monopoly
in part of the prior art. (at p478)
14. Even if the claim, construed in isolation, is not to be interpreted as we
consider it should be interpreted, we cannot think
that the expression
"lateral face or faces", read in association with the words "clamped against",
is necessarily to be read as signifying
the internal surface of the secondary
projection. If the expression is not clear it is then permissible to resort to
the body of
the specification to define or clarify the meaning of words used
in the claim without infringing the rule that clear and unambiguous
words in
the claim cannot be varied or qualified by reference to the body of the
specification (see Electric & Musical Industries
Ltd. v. Lissen Ltd. (1938) 4
All ER 221 ; 56 RPC 23 ; Rosedale Associated Manufacturers Ltd. v. Carlton
Tyre Saving Co. Ltd. (1960)
RPC 59, at p 69 ). Once reference is made to the
body of the specification, it is apparent that the expression is not used in
the
sense urged by the respondent. (at p479)
15. Read in isolation or in the light of those parts of the specification
which precede it, claim 1, as we understand it, asserts
a monopoly in blocks
which incorporate the coupling method referred to in the claim and elsewhere
described. It is a claim by reference
to result in the sense that it indicates
how the projections are placed when assembly takes place, and does not
explicitly specify
other means of clamping, that is, the use of the side and
end walls of the blocks, when assembly takes place. (at p479)
16. The definition of the invention in the claim, which is framed by
reference to the result achieved when assembly takes place,
lends itself to
criticism in that it does not state explicitly the means by which at least one
primary projection is to be clamped
against at least one secondary projection.
The claim is expressed in the language of the statement of the principal
feature of the
invention contained in the body of the specification. Although
the claim does not set out the detailed explanation of the invention
contained
in the body of the specification, it is to be understood in the light of that
explanation. When it is so read, the reader
will perceive that, when two
blocks are assembled, a single primary projection will be kept in place
against a single secondary projection
by the wall or walls of the block
containing the secondary projection, and that when there is more than one
secondary projection
the primary projection will be kept in its appointed
place by the walls of the other block or by another or other secondary
projections.
(at p479)
17. There are two specific objections to the definition attempted by the
claim. One objection is that it actually negatives participation
by the walls
of a block in the coupling process. For our part, we do not so understand the
claim. It deals with the assembly of blocks
described as "hollow blocks",
thereby bringing to mind the circumstance that the walls, in accordance with
what has already been
said, will provide co-operative assistance in that
assembly. (at p479)
18. The second objection is that the claim is wide enough to embrace a
coupling method not disclosed in the specification (e.g.
a clip) which would
keep a primary projection in its appointed place. Again, we do not agree with
this interpretation of the claim.
It speaks of "hollow blocks . . . adapted to
be connected together by means of projections", indicating that it is confined
to methods
of clamping effected by means of the characteristics to which it
refers, including among them the walls of the hollow blocks. (at
p480)
19. The claim asserts a monopoly limited by reference to the result of
incorporating in the construction of the hollow blocks the
suggested
relationship between primary and secondary projections, the result being that
at least one primary projection is "clamped
against" at least one secondary
projection. It is permissible to limit a claim by reference to result (see
No-Fume Ltd. v. Frank
Pitchford & Co. Ltd. (1935) 52 RPC 231 ), so long as, in
the case of an article, the limitation is "sufficient to characterize
the
construction of the article claimed" (Mullard Radio Valve Co. Ltd. v. British
Belmont Radio Ltd. (1938) 56 RPC 1, at p 16 ).
As we
have observed, the claim
is in our opinion sufficiently limited. (at p480)
20. Apart from the two grounds of invalidity already considered the
respondent submitted that the appellant's patent was invalidated
on the
grounds of prior publication and prior user. The first ground taken was based
on the disclosure of an invention in a French
patent no. 1,141,279, deposited
in the Patent Office Library at Canberra on 6th February 1958, nine days later
than the priority
date assigned to the first claim in the appellant's patent
by the Patents Office, namely, 28th January 1958. The Commissioner for
Patents
evidently concluded that the first claim was fairly based on matter disclosed
in the Danish basic application of 28th January
1958, one of several
Convention applications on which the appellant's Australian application was
based (see ss. 141,142). The respondent
sought to displace the assigned
priority date by showing that claim 1 was not "fairly based on matter
disclosed" in the Danish application
within the meaning of s. 142 (4). We are
prepared to assume, without so deciding, that the respondent's argument on
this point is
correct, as we have come to the conclusion that the French
patent in any event is not a prior publication of the appellant's invention.
(at p480)
21. The invention disclosed in the French patent consists of a set of hollow
blocks so manufactured that the length of each block
is approximately double
its width. A transverse partition is placed half-way along the length of the
block so as to divide the cavity
into two equal square spaces. On the opposite
side of the block are two male insertion elements, each constituted by a
cross-shaped
profile with four branches which fit into the square cavities of
the adjacent block. If the transverse partition is to be regarded
as a
secondary projection, each block contains but one, whereas the appellant's
invention contemplates that the secondary projections
will not necessarily be
so limited in number. What is of more importance is that the transverse
partition is something different
from the appellant's concept of a secondary
projection. The partition is an internal wall which divides the cavity of a
block into
two equal spaces ; the secondary projection performs no such
function. There is also lacking in the French patent that arrangement
of
primary and secondary projections having an interrelationship in position and
dimension which is characteristic of the appellant's
invention. For these
reasons we do not regard the French patent as a prior anticipation. (at p481)
22. Next, it is said that the development from the French patent to the
appellant's invention was obvious. In the light of the discussion
which has
already taken place this submission has little force. As we see it, the French
patent did little more than capitalize on
the known method of assembly which
involved the fitting of primary projections on one block within the cavity of
another block ;
by providing the transverse partition it divided the cavity of
a hollow block into two equal spaces and thereby enabled staggered
or offset
connexion to take place in several positions. To our way of thinking the
provision of the transverse partition did not
point in the direction of a
method of assembly based on the interrelationship of primary and secondary
projections of the kind proposed
by the appellant's invention. (at p481)
23. The respondent then relied upon the sale in Australia prior to 28th
January 1958 of toy blocks known as "Bilda Brix". It is
common ground that
they were widely sold in this country before that date. "Bilda Brix" are
hollow blocks having primary and secondary
projections adapted to be assembled
one on top of the other with the primary projections of the lower block
fitting into recesses
in the secondary projections of the adjacent upper
block. It so happens that some, but not all, of the blocks may also be
assembled
by means of clamping the primary projections in the spaces between
the secondary projections and the walls of the block. The circumstances
in
which "Bilda Brix" were marketed were not proved in evidence. There is no
evidence which would suggest that the manufacturers
or distributors asserted
that one of the qualities of the product was a capacity for assembly in a
staggered or offset relation.
Indeed, the fact that some blocks are not
adapted to that method of assembly would indicate that they were neither
regarded, nor
held out, as being adapted to assembly in this fashion. (at
p482)
24. In the absence of evidence of this kind we would not be justified in
inferring that the sale of the blocks gave rise to a prior
publication or a
prior user in a manner unfavourable to the appellant's case. Whether the
blocks were ever assembled in staggered
or offset fashion seems to us to be a
matter of speculation and no more. Moreover, even if the blocks were so
assembled before 28th
January 1958 there is nothing to indicate whether that
use was other than accidental and minimal. Prior use, in order to invalidate
a
patent, must be a use which is more than accidental and experimental (see
Bristol-Myers Co. (Johnson's) Application (1973) RPC
157, at pp 165-166 ).
Consequently, the objections which are based on the sale of "Bilda Brix" fail.
(at p482)
25. There is finally the question of infringement. Although this issue was
virtually conceded by the respondent at the hearing of
the action, the point
now taken by the respondent is that its product does not involve assembly by
means of secondary projections.
The respondent's blocks have primary
projections of the kind recommended in the appellant's patent ; indeed, they
are of the same
dimensions and spacing as the primary projections in the
appellant's "Lego" blocks. However, in lieu of the tubular secondary
projections
recommended in the appellant's patent, the respondent's "Toltoy
Brix" are equipped with partitions running diagonally across the
cavity of the
hollow block, dividing the cavity into a series of small compartments into
which the primary projections of an adjacent
block will fit. If it be proper
to style the diagonal partitions as secondary projections "arranged within the
cavity of the block",
when the blocks are assembled the lateral face of at
least one primary projection is clamped against the lateral face of at least
one secondary projection, with the consequence that the respondent's product
infringes the appellant's patent. In our opinion the
diagonal partitions of
the respondent's product may be described accurately as secondary projections
"arranged within the cavity
of the block". (at p482)
26. Consequently, in our view the appellant has established that the
respondent infringed its patent and is entitled to relief accordingly.
The
counterclaim for revocation of claim 1 of the letters patent should be
dismissed. (at p482)
MENZIES J. This is an appeal from a judgment of Stephen J. in favour of the
defendant in a patent action. The plaintiff (Interlego)
sued the defendant
(Toltoys) for infringement of Australian letters patent No. 229, 550 relating
to "improvements in and relating
to toy building sets and building blocks"
relying exclusively upon claim 1 of the complete specification. The defendant
counter-claimed
for revocation on various grounds. The action was dismissed
and claim 1 was revoked. (at p483)
2. There were two grounds for his Honour's decision to revoke claim 1. The
first was that the claim was expressed so widely as to
include as part of the
monopoly claimed that which was not novel and had, indeed, been described in
the body of the specification
as part of the prior art. The second was that
the claim did not comply with s. 40 (1) of the Patents Act in that it did not
define
the invention described in the body of the specification. His Honour
rejected a submission that the claim was invalid either by reason
of
obviousness or lack of novelty in the sense that it had been anticipated by
earlier articles or published material. In the course
of his decision that the
invention had not been anticipated, his Honour had no regard to French letters
patent 1,141,279, first open
for inspection in the Canberra Patent Office
Library on 6th February 1958, because of his conclusion that the priority date
of claim
1 was 28th January 1958. His Honour held that the application being a
convention application was fairly based upon matter disclosed
in the basic
application, viz. a Danish patent application of 28th January 1958. His Honour
accordingly did not consider the question
whether the French letters patent
would have constituted an anticipation of what is claimed in claim 1. (at
p483)
3. His Honour thought that, prima facie, infringement had been established.
(at p483)
4. Upon this appeal it was contended on behalf of Toltoys, that, not only was
his Honour correct in deciding that claim 1 was invalid
upon the two grounds
on which the decision was based, but also, that the claim was invalid because
it had been anticipated and it
was obvious. In so submitting counsel for
Toltoys challenged the finding that the priority date of claim 1 was 28th
January 1958,
contending that the application for the patent in question was
not fairly based upon the Danish application of that date. This was
preliminary to a reliance upon the French letters patent No. 1,141,279 as an
anticipation and as matter making the invention claimed
obvious. Furthermore,
counsel for Toltoys contended that the invention was not novel because of the
sale in Australia, prior to 28th
January 1958, of building blocks known as
"Bilda Brix". Finally it was contended that the blocks sold by Toltoys did not
infringe
claim 1 of letters patent No. 229,550. (at p483)
5. I propose to examine, in the first place, his Honour's reasons for
deciding that claim 1 is invalid. (at p483)
6. The claim is as follows :
"1. A toy building set comprising a plurality of hollowWhat is there defined is a set of toy building blocks - two at least - which can be connected together. Each is a hollow block with a top open face. Each has projections from its bottom face - primary projections - and of these primary projections one at least will, in assembly with an adjacent block, have a lateral face clamped against the lateral face of at least one secondary projection arranged within the cavity of the adjoining block. These secondary projections are projections from the floor of the cavity of the block extending towards its open face. The clamping depends upon the positions and dimensions of the secondary projections of one block relatively to the positions and dimensions of the primary projections of another block. No further definition is attempted. A block may be of any material ; it may be of any size ; it may have any number of primary projections. Not every block must have secondary projections, but a block which has secondary projections may have one or more of such projections. The size, shape and arrangement of the primary projections are not specified. The size, shape and arrangement of any secondary projections are not specified. All that is specified with regard to the projections is that, upon the assembly of two adjacent blocks, "the lateral face or faces of at least one primary projection of one block will be clamped against the lateral face or faces of at least one secondary projection of the adjacent block". The invention is defined by a result to be achieved in a stated manner. There is no reference to the walls of any block - apart from the description "hollow blocks" - and in particular the clamping which is to occur upon assembly is not stated to be due to the positions and dimensions of the walls relatively to the positions and dimensions of either the primary or, where they exist, the secondary projections. Indeed, the claim, as it is framed by the express reference to the positions and dimensions of the projections, would seem to negative according to the positions and dimensions of the side walls of the hollow blocks, any part in the result to be achieved. (at p485)
blocks open at one face and adapted to be connected together
by means of projections extending from the bottom faces of
said blocks, and wherein some of the blocks are provided
with at least one projection (primary projection) at the bottom
face opposite the open face, and some of the blocks are provided
with at least one projection (secondary projection) arranged
within the cavity of the block, characterised in that the
positions and dimensions of the secondary projections relatively
to the positions and dimensions of the primary projections are
such that, in a pair of assembled blocks the lateral face or faces
of at least one primary projection of one block will be clamped
against the lateral face or faces of at least one secondary
projection of the adjacent block (28th January 1958)."
7. It is obvious that two blocks, each without secondary projections, cannot,
in accordance with what is defined, be assembled together
; the clamping
effect is made to depend upon the relative positions and dimensions of primary
and secondary projections. (at p485)
8. Furthermore, it is obvious that if one block has but one primary
projection and another block has but one secondary projection,
the clamping to
effect their connexion could be achieved in but one of two ways, First, by the
engagement of a primary and a secondary
projection by one fitting into the
other so that the external lateral face of one is clamped by being met with
the internal lateral
face of the corresponding open projection. Alternatively,
by engaging the projection of one block between a wall and a projection
of the
adjacent block so that the two would form a clamp for the intruding projection
from the other block. (at p485)
9. If the claim does cover the first method of achieving a connexion between
blocks, where one has but one secondary projection,
it is invalid because such
a method of assembling blocks was well known before the priority date of claim
1. Indeed, in the body
of the specification this is expressly stated as
follows :
"Moreover, in another type of hollow building blocks which(at p485)
are likewise provided with outwardly extending projections on
the side opposite the open face there are provided inwardly
extending projections arranged co-axially with the outwardly
extending projections, the arrangement being such that the
outwardly extending projections are provided with recesses
adapted to receive the ends of the inwardly extending
projections of another block."
10. Stephen J. held that the claim does, upon its proper construction, cover
such a method of connexion, and if his Honour was correct
in so construing the
claim that would be an end to the matter. A patentee is not entitled to a
monopoly for what is acknowledged
to be and is old. (at p485)
11. In considering the correctness of his Honour's decision on this point, it
is, I think, legitimate to construe a claim in a specification
which refers to
prior art as, prima facie, not intending to encompass what belongs to that
prior art within the definition of the
invention claimed. See Welch Perrin &
Co. Pty. Ltd. v. Worrel (1961) 106 CLR, at pp 593, 610, 614 . If, however,
upon the proper
construction of a claim, what was prior art is found to be
within the definition of the invention claimed, the patent will be invalid.
It
matters little how it came about that what was old has been claimed as
comprehended by the invention for which a monopoly is sought.
(at p486)
12. Accordingly, the question is whether claim 1, upon its proper
construction, does cover a connexion by means of a projection
from one block
fitting into a recess in an adjacent block upon assembly. Put more precisely,
the problem is whether, when a primary
projection is forced into a recess in a
secondary projection so that it holds there by virtue of the elasticity of the
projections,
what occurs is the clamping of the face of one against the face
of the other projection, For the purposes of examining this problem,
the
complexity resulting from various shapes that a projection may take can be
legitimately avoided and the simple course followed
of taking two circular
projections, the secondary projection being tubular into which the primary
projection can be forced so that
it will hold until disengaged. If the
invention as defined covers this method of making a connexion between two
blocks of the sort
described, then it follows that the claim includes in its
definition of the invention blocks belonging to the prior art which would,
upon the grant of the patent - if valid - become infringing articles. (at
p486)
13. As a matter of first impression, the language of the claim hardly amounts
to an apt description of the method of connexion which
I am considering, but
it must be kept in mind that the language of the claim is intended to cover a
wide range of means providing
for the connexion of a number of blocks and it
may be that it is of little importance that the language used would not
constitute
a very apt description of something within that range if it merely
stood by itself. An impression cannot be decisive ; the language
of the claim
does, I think, require close examination. First, does the exterior face of a
column fall within the description of "a
lateral face" simply because it is a
side face? I think it does. Secondly, does the interior face of a tube fall
within the description
of "a lateral face"? Again I think it does. A tube has
an inside face as well as an outside face, and if one is lateral so is the
other. Accordingly to push a column into a tube so that it is held within the
recess does bring two lateral faces of the projections
together. The next
question is whether the lateral face of the column so held should properly be
described as "clamped" against the
lateral face of the tube. In the context of
the claim the word "clamped" does, I think, import that the clamping action is
to depend
upon the force used in the assembly of two blocks and not upon their
being held together by the pressure of some separate clamp,
such as a band
which could be tightened around them. Accordingly, to force a primary
projection between two secondary projections
so that the connexion would hold
until the projections are disengaged, would result in the kind of clamp to
which the claim relates.
There is, however, only one arrangement in which one
primary projection could engage with one secondary projection and nothing
else,
i.e. by forcing one into the other so that the inside projection is
clamped in the outside projection as is a cork in a bottle. (at
p487)
14. The claim unquestionably contemplates that there may be but one primary
projection in engagement with one secondary projection.
This follows from the
insistence 1. that the engagement may be merely one with one face to another
face, and 2. that the clamp must
always depend upon the relative positions and
dimensions of the projections. Accordingly I have, with some hesitation, come
to agree
with the first ground upon which Stephen J. decided that the claim is
defective. His decision is, I think, supported by the evidence
to which he
refers, and which I will not repeat, relating both to what an engineer would
understand by the words "lateral face" and
"clamped". (at p487)
15. It seems to me, moreover, that there is a real link between this ground
and his Honour's second ground, i.e. that the claim
does not define the
invention, for unless the claim covers the insertion of a projection from one
block into a projection from another
block the claim does not define that part
of the invention covering the clamping of one lateral face of one projection
against one
lateral face of another projection in an adjacent block. The
claim, as has already been observed, insists that the clamping is to
follow
from "the positions and dimensions of the secondary projections relatively to
the positions and dimensions of the primary
projections". This I treat as
exhaustive and as leaving no room for the introduction of some other means of
clamping such, for instance,
as by reason of the positions and dimensions of a
wall of a block relatively to the positions and dimensions of the primary or
secondary
projections. Accordingly the invention cannot be defined by
introducing the walls as a means of ensuring the essential result, namely
that
the lateral face of a primary projection would be clamped against the lateral
face of a secondary projection. (at p487)
16. The defect which I find in claim 1, viz. that it does not define the
invention, cannot be overcome by the principle applied
by the Court of Appeal
in No-Fume Ltd. v. Frank Pitchford & Co. Ltd. (1935) 52 RPC 231 , which was a
case dealing with insufficiency.
There it was decided that an invention may be
defined by reference to the result, and the shapes and dimensions requisite to
produce
the result need not be defined if the dimensions are sufficiently
described as to be ascertainable by tests not involving the exercise
of any
inventive faculty. That decision could perhaps be invoked to answer a
contention that the words in claim 1 "the positions
and dimensions" of the
projections do not provide sufficient information. The principle cannot,
however, save a specification that
does not define an alleged invention
because the language of the claim impliedly excludes a necessary element from
consideration.
What Romer L.J. said is relevant here (1935) 52 RPC, at p 243
:
"It is essential to the validity of a patent that the completeIt is this second essential that I find lacking in claim 1. It matters not, therefore, that a skilled workman might, without inventive skill, arrange one projection in such a relationship with a side wall of the cavity of a block that the two could operate to clamp a projection from another block, for such a clamping is outside the definition of the invention. (at p488)
specification should sufficiently and fairly describe and ascertain
the nature of the invention and the manner in which the
invention is to be performed : in other words, that the patentee
should disclose his invention sufficiently to enable those who
are skilled in the relevant art to utilize the invention after
the patentee's monopoly has come to an end. Such disclosure
is, indeed, the consideration that the patentee gives for the
grant to him of a monopoly during the period that the patent
would run. Another essential to the validity of the patent is
that the complete specification should sufficiently and clearly
ascertain the scope of the monopoly claimed. The reason for
that is in order that those who are engaged in the art may
know how far they can go without running the risk of having
an action for infringement of the patent started against them
by the patentee. If the complete specification does not clearly
indicate the ambit of the invention, it will redound, to use the
words of s. 6 of the Statute of Monopolies, 'to the hurt of trade,
and be generally inconvenient'. One might put it a great
deal more strongly - the patent will be a public nuisance,
hindering and embarrassing those persons engaged in the
particular art, from carrying on their legitimate trade or
business."
17. The possibility did occur to me that the specification might be read as
requiring that every block to which it relates must
have a plurality of
primary projections. Were this so, it could, of course, be arranged that one
secondary projection could be clamped
between two or more primary projections.
Such a reading of the claim would, of necessity, exclude a block with one
primary projection
only from the ambit of the claim. Counsel for the appellant
rejected such a construction as a possible reading of the claim and did
so, no
doubt, for good reason. I, of course, accept that rejection and decide the
case without regard to the possibility of so construing
claim 1. (at p489)
18. In short, therefore, it appears to me that what is claimed, to the extent
that it covers the engagement of one primary projection
with one secondary
projection, can be achieved in but one of two ways : first, by the insertion
of one projection in the other ;
secondly, by the use of a side wall of the
block in conjunction with projections to achieve a clamping effect. If the
first possibility
is covered by the claim it is bad because something included
in a claim for a monopoly is old. Of the second possibility there is
no hint ;
indeed, the assertion that the engagement depends upon the relative positions
and dimensions of the projections themselves
excludes it from consideration.
(at p489)
19. Accordingly, because I agree with Stephen J. that claim 1 is invalid for
the reasons which he has given, it is unnecessary for
me to consider the other
submissions of the appellant. (at p489)
20. I would, for the foregoing reasons, dismiss the appeal. (at p489)
ORDER
Appeal allowed with costs.
Orders made by Stephen J. set aside. In lieu thereof order -
1. That the respondent by itself, its servants and agents be restrained from
infringing the appellant's Letters Patent No. 229,550
during the continuance
or any extension thereof.
2. That it be referred to a Justice of this Court to inquire as to what
profits have been made by the respondent by reason of its
infringement of the
appellant's said Letters Patent.
3. That the respondent pay to the appellant the amount ascertained in the said
inquiry.
4. That the appellant have liberty to apply for an order for delivery up of
infringing articles.
5. That the respondent pay the appellant's costs of the action and
counterclaim.
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