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High Court of Australia |
OLIN CORPORATION v SUPER CARTRIDGE CO. PTY. LTD. AND ANOTHER (1994) 180 CLR
236
Patents
HIGH COURT OF AUSTRALIA
BARWICK CJ(1), GIBBS(2), STEPHEN(3) AND MASON(3) JJ
Patents - Infringement - Revocation - Validity - Whether claims clear and succinct - Whether fairly based on matter in specification - Novelty - Obviousness - Inventive step - Patents Act 1952 (Cth), ss. 40(2), 100(1)(c), (e), (g).
DECISION
BARWICK CJ My consideration of this matter over the space of some months, interrupted as inevitably it has been due to the need to hear and consider other and more urgent matters, has led me to the conclusion that the appellant should succeed both as to the infringement of the process claim and as to the product claims in respect of the plastic tubular structure. In relation to the time taken to reach these conclusions and to express the reasons on which they are based, I should say that this Court, bearing in mind its other responsibilities, has become an inappropriate tribunal to try such cases as the present, or to hear and determine appeals therein involving as they do consideration of the detailed and particular facts and circumstances relating to inventions and to the infringement of patents. It seems to me that, in the field of industrial property generally, the energies of this Court ought in general to be reserved kg the consideration and statement of matters of general principle which other courts with suitable jurisdiction should apply. As the relevant statutes now stand, it is almost inevitable that this Court is called upon in the area of industrial property to take the whole case in hand: it cannot limit its consideration to matters of general principle. Thus placed, delay in disposing of such cases is inescapable. It is time that other jurisdictional arrangements were legislatively made, both for the trial of such cases and for the hearing of appeals therein.
2. Having completed my investigation and consideration of this case, the
matter of preparing reasons for judgment remained. However,
before being able
to complete a statement of my reasons for my conclusions, I was given the
advantage of reading the reasons for
judgment prepared by my brothers Stephen
and Mason. Having considered them, I agree with their Honours' conclusions
that claims
1 and 17 of the appellant's specification are valid claims and
that the first respondent's process infringes claim 1. I fully agree
with the
reasons which my brothers express for those conclusions. They so adequately
reflect my own view that I find no need to
supplement them.
3. However, I am unable to agree that none of the claims 10-13 of the
specification is valid. I agree for the reasons of my brothers
Stephen and
Mason that what is there claimed was neither anticipated nor obvious. In
particular, I agree with my brothers' consideration
of and conclusions about
the earlier patents, Core and Covington. The product was not obvious, nor its
production anticipated:
its utility is clearly demonstrated. There was, in my
opinion, the necessary inventive step in its production. Further, there was,
in my opinion, invention in the combination of those physical characteristics
of the structure which gave it its unique qualities.
4. I am satisfied that the plastic structure with walls of the kind resulting
from the use of the appellant's claimed process
is itself novel, new in the
language of this area of the law. No like structure had been produced before.
It is nothing to the
point, in my opinion, that the use of a shell case made
of brass or other substance was known or that the shape or form of the shell
case dictated by that use was like that of the appellant's product. The
similarity in appearance or function of the metallic or
other shell case and
the appellant's product does not, in my opinion, deny novelty in the latter.
5. The critical question which in my opinion remains is whether the product
claims in question are fairly based on the disclosure
of the specification and
do not exceed it, or, as it is put, are not too wide, having regard to the
terms of the application. As
my brothers Stephen and Mason point out, it has
been decided that a product claim for an article which satisfies the test of
invention
as laid down may be valid if fairly based on the disclosure of the
specification and if it does not claim more than that disclosure.
In the
language of this Court in National Research Development Corporation v.
Commissioner of Patents (1), the product as distinct
from the process which
produces it may be "a proper subject of letters patent according to the
principles which have developed
for the application of s. 6 of the Statute of
Monopolies".
6. The question whether the claim is fairly based is not to be resolved, in
my opinion, by considering whether a monopoly in the
product would be an undue
reward for the disclosure. Rather, the question is a narrow one, namely
whether the claim to the product
being new, useful, and inventive, that is to
say, the claim as expressed, travels beyond the matter disclosed in the
specification.
My brothers, in their reasons, set out the relevant
considerations in determining whether a product claim is fairly based on the
disclosure. I have no need to repeat their references and their citations.
7. I set out in full claim 10, which is for
"A relatively thin walled tubular structure having a base at one end and
formed of highly crystalline polyolefin polymer of substantially
regularly
ordered molecular structure, said structure being characterized by the fact
that the wall of the structure has been formed
in the solid state at an
operative temperature below the crystalline melt temperature of the polymer to
provide an increase in
tensile strength of the polymer in said wall at a point
remote from the base of at least twice the tensile strength of the polymer
in
said base."
8. It is apparent that this claim is not limited to a product being the
result of the use of the appellant's process. To have
so limited the claim
would have added little, if anything, to the monopoly given by a patent for
the process. The features of the
product upon which the claim fastens are the
thinness of the tube of highly crystalline polyolefin polymer of substantially
regularly
ordered molecular structure formed in a solid state at less than the
crystalline melt temperature of the polymer with a tensile
strength at a point
remote from the base at least twice the tensile strength at the base of the
tube.
9. Now, it seems to me that the appellant made two inventions. He found and,
in my opinion, disclosed what I shall, perhaps
(1) [1959] HCA 67; (1960) 102 CLR 252, at p. 269.
insufficiently, call a plastic structure which, exhibiting certain physical
features the result of manufacture, would be effective
for its intended
purpose and be reusable. This was not mere discovery without invention. He
also found a method of producing those
physical features. The specification,
in my opinion, discloses both inventions, each of which exhibits all the
traditional features
of a new method of manufacture as the time-honoured
expression has been interpreted and explained (2). No one had ascertained and
made public those physical characteristics of a plastic structure which would
make it effective and reusable. The claim does describe
those physical
features. It may well be that these physical features had not been ascertained
and disclosed because no one had
devised a process which resulted in a shell
case possessing those physical attributes. But that does not mean there was
not invention
in the ascertainment of the necessity for, and of the
effectiveness and utility of, those induced physical properties or
characteristics.
The essential physical attributes are a combination of the
temperature at which the structure is produced from the particular polymer
and
the relationship of the tensile strength at two separated points of its thin
wall. It is the combination of these elements
that provides the effectiveness
and particular utility as well as the novelty of the structure. This
combination itself involved
invention. Further, the significance of that
combination is, in my opinion, disclosed in the specification. After relating
the
state of the prior art and exposing the insufficiencies of its products,
the objects of the invention are stated as two-fold: (1)
a product and (2) a
process. In describing the object, the specification speaks of it as "an
article composed of a crystalline
polymer of a thermoplastic synthetic resin
formed in such a way that exceptionally high strength is obtained adapting the
article
for use as a container under pressure". It is said that
"according to a further aspect of the invention, there is provided a
relatively thin walled tubular structure having a base at
one end and formed
of highly crystalline polyolefin polymer of substantially regularly ordered
molecular structure, said structure
being characterized by the fact that the
wall of the structure has been formed in the solid state at an operative
temperature below
the crystalline melt temperature of the polymer to provide
an increase in tensile strength of the polymer in said wall at a point
remote
from the base of at least twice the tensile strength of the polymer in said
base".
10. It is clear enough from the specification that the tensile strength
described in the claim was achieved by
(2) See National Research Development Corporation v. Commissioner of
Patents.
"compressively deforming a blank to a final size and shape at a temperature
below the crystalline melt temperature, said case comprising
a relatively
thick base of crystalline polyolefin formed integrally in one piece with a
relatively thin tubular wall portion of
said plastic, said tubular wall having
a longitudinal tensile strength ranging from the strength of undeformed
plastic at one end
adjacent said base to at least three times the strength of
undeformed plastic at the opposite end".
11. The claim is not limited to the production of the stated physical
characteristics by compressive deformation. But that, in
my opinion, does not
mean that a claim for the resultant physical characteristics, if suitably
described, was not fairly based
on the disclosure. It is the possession of the
described characteristics of structure which provide its particular novelty
and
effectiveness: indeed, its unique quality. A structure possessing these
stated characteristics, however they may be induced, would
have the
effectiveness which gives both novelty and utility to the appellant's product.
He has, in my opinion, given to the public
the structure as well as inventing
one means of producing those physical characteristics which constitute
invention. The claim
asserts all the integers, the combination of which give
novelty and utility. The particular manner of producing the increase in
tensile strength of the thin walled tube of highly crystalline polyolefin
polymer of substantially regularly ordered molecular
structure is not
essential to that novelty or utility. Neither the novelty nor the utility
depends on any particular method of
use of the structure (3).
12. I would therefore allow the appeal and dismiss the cross-appeal.
13. Since writing the above, the Parliament has enacted amendments to the
Judiciary Act 1903 (Cth): as a result, the Supreme Courts of the States now
have jurisdiction to entertain actions for infringement of patents even
in
cases where the validity of the patent is in question.
GIBBS J This appeal and cross-appeal are brought from a judgment of Jacobs J
in an action in which the appellant sued for infringement
of a patent and the
respondents counterclaimed for revocation. The invention relates to "the
manufacture of strengthened bodies
of crystalline polyolefin material and
specifically to the manufacture of hollow bodies such as shot shells from
polyolefins".
The claims were for a process (claims 1-9 and claim
(3) For a contrasting situation, see Mullard Radio Valve Co. Ltd. v. Philco
Radio and Television Corporation of Great Britain
Ltd., (1936) 2 All ER 920;
(1936) 53 RRC 323.
19) and for products (claims 10-18 and 20-22). The alleged infringements
consisted in the manufacture and sale by the respondents
of shotgun shells or
cartridges. Jacobs J dismissed the action for infringement, allowed the
counterclaim in so far as it claimed
revocation of certain product claims
(claims 10-13) and made a declaration that a further product claim (claim 17)
is valid.
2. The first question that arises for decision on the appeal is whether
Jacobs J was right in holding that there was no infringement
of claims 1, 2, 5
and 6. Claim 1 reads as follows:
"A process comprising the steps of; confining a preformed blank of a
crystalline polyolefin material in its self-supporting crystalline
man in a
die cavity; closing said die cavity with a punch member dimensioned so as to
define a space between said punch and die
cavity; and applying sufficient
pressure to said blank with said punch to compressively deform into said space
while in said state
and in a temperature range below the crystalline melt
temperature thereof, oriented material of said blank having substantially
increased tensile properties. (1 September 1961)"
3. Claims 2, 5 and 6 add additional elements, which, it is not disputed, are
to be found in the respondents' process.
4. In discussing the meaning of these claims the parties attached some
importance to the following passage which appears in the
body of the
specification:
"In accordance with this invention, articles of manufacture, such as shot
shell bodies, are formed at least in part by compression
from plastic
materials such as polyethylene, polypropylene and the like polymers and/or
co-polymers of the same, all finally shaped
in the solid crystalline state.
High density linear polyolefins specifically are contemplated for forming by
compression as distinguished
from forming by stretching. By confining the
plastic between at least two juxtaposed surfaces exerting pressure on the
plastic
and by driving plastic with plastic final shaping to a thin-walled
body is achieved advantageously from a relatively thick slug
or blank of the
linear polymer to attain a very high increase in strength of the body. This is
done at a wide range of working
temperatures below the crystalline melt
temperature of the material and at speeds of compressive deformation limited
to prevent
an excessive rise in temperature, which is maintained preferably at
an elevated temperature range less than the crystalline melt
temperature."
5. It was not disputed that certain elements of the process described in
claim 1 were present in the process by which the respondents'
products were
manufactured. The latter process involved the use of a preformed blank of a
crystalline polyolefin material in its
selfsupporting crystalline state. It
took place in a temperature range below the crystalline melt temperature, and
the material
of the blank was oriented in the process so that it had
substantially increased tensile properties. It was however disputed that
the
process comprised the steps of confining the blank in a die cavity, closing
the die cavity with a punch member dimensioned
so as to define a space between
the punch and the die cavity, and applying sufficient pressure to the blank
with the punch to compressively
deform the material of the blank into the
space defined between the punch and die cavity. Briefly described the
respondents' process
is as follows. A preformed blank of linear high density
polyethylene is forced over the end of a punch which is slightly tapered
towards its tip and which is rounded near the tip. The punch is then driven
into a die cavity thus elongating the blank to form
a shot shell case. The
punch and the shell case which is still fitted to it are removed from the die
cavity and the shell case
is stripped from the punch. Two subsequent
operations are necessary, to trim the end of the case and to form a rim, but
these need
not be discussed.
6. In the respondents' process, the effect of forcing the blank onto the
punch is to expand the side walls of the blank, but the
base of the blank is
not affected. After fitting, the diameter of the blank is .830" and that of
the base is .774". The die cavity
tapers from its entrance for a distance of
about an inch; at the entrance its diameter is .950", and after it ceases to
taper and
becomes straight-sided, its diameter is .805". As is obvious from
the dimensions just stated, the unstretched base of the blank
is narrow enough
to pass untouched into the straight-sided portion of the die, but the expanded
part of the blank must make contact
with the wall of the die before it has
reached the commencement of the straight-sided portion of the die. The point
at which the
blank first makes contact with the surface of the die, which is
about one-tenth of an inch before reaching the straight-sided portion,
may for
convenience be called "line 18", because it is thus represented in some of the
figures which form part of Exhibit F.
7. It was contended on behalf of the respondents that even if the three
elements essential to claim 1 were found in the respondents'
process (which
was denied) they occurred simultaneously, and that it is an essential feature
of the claim that the process must
be carried out in successive and distinct
steps, in the order in which they are described in the claim. The claim states
that the
process comprises "steps", but although that word may connotate
action taken as a part of a series, it does not necessarily do so.
According
to the definitions contained in the Shorter Oxford English Dictionary, "step",
in its figurative sense, means "an action
or movement which leads towards a
result; one of a series of proceedings or measures".
8. In the ordinary usage of the word, "steps" may be taken simultaneously or
in no particular order. The claim does not state
that the steps should be
taken in the order in which they are mentioned and there is nothing in the
body of the specification that
suggests that the order in which the steps are
taken has any importance or is intended to be significant. On the contrary the
description
of the preferred embodiments of the invention is inconsistent with
the view that the claim involves successive steps. It may be
arguable whether
the first step - confining the pre-formed blank in the die cavity - is
completed when the blank is placed in the
open die, or only when the second
step is commenced, that is when the die cavity is closed by the punch. The use
in the specification
of the words "confining the plastic between at least two
juxtaposed surfaces" would quite strongly favour the latter view, for the
surfaces referred to appear to be those of the punch and the die. However that
may be, it is clear that in the preferred embodiments
described in the
specification the second and third steps - closing the die cavity with a
punch, and applying pressure to the blank
with the punch to compressively
deform it into the confined space - are taken together. The punch is rammed
into the die assembly,
and at one stroke closes the die cavity and applies
pressure to the blank. Since the second and third steps may be taken
simultaneously,
the word "steps" cannot have a meaning that requires the three
steps to be taken separately and in order, or that requires the first
step to
be completed before the others are commenced. What is described is a
continuing process, and the word "steps" merely means
"actions" or "measures",
which can be carried out all at once. If therefore the respondents' process
involves taking the steps
described in claim 1, it will infringe the patent
even if the steps are not taken in the order in which they are mentioned in
the
claim.
9. It then becomes necessary to consider whether the respondents' process
includes all the elements of the appellant's claim.
It was contended on behalf
of the respondents that in their process the blank, which is placed on the
punch while outside the die,
and is moved into and out of the die while on the
punch, and is never stationary within the die, cannot be said to be confined
in a die cavity. It was pointed out that in the appellant's preferred
embodiments the blank is placed within the die cavity before
the punch is
introduced. Further it was said that in the respondents' process the die
cavity is not closed with the punch, or at
least is not so closed as to define
a space between the punch and the die cavity. The final argument upon which
the respondents
placed the strongest reliance, was that in the respondentand
process the blank is not compressively deformed by the punch into the
space
defined between the punch and the die cavity.
10. There can be no doubt that the appellant cannot succeed in establishing
infringement unless it is proved that the respondents'
process takes "each and
every one of the essential integers" of the appellant's claim (4). The
appellant in argument relied on
a passage from the judgment of Dixon J in
Radiation Ltd. v. Galliers and Klaerr Pty. Ltd. (5):
"But, on a question of infringement, the issue is not whether the words of
the claim can be applied with verbal accuracy or felicity
to the article or
device alleged to infringe. It is whether the substantial idea disclosed by
the specification and made the subject
of a definite claim has been taken and
embodied in the infringing thing."
11. Dixon J (6) went on to quote the words of James LJ in Clark v. Adie (7):
"The patent is for the entire combination, but there is, or may be, an
essence or substance of the invention underlying the mere
accident of form;
and that invention, like every other invention, may be pirated by a theft in a
disguised or mutilated form, and
it will be in every case a question of fact
whether the alleged piracy is the same in substance and effect, or is a
substantially
new or different combination."
12. The statements in these passages are still good law (8). However, as was
pointed out in C. Van der Lely N. V. v. Bamfords
Ltd. (9), the principle that
there may be infringement by taking the "pith and marrow" or the substance of
an invention does not
mean that there will be an infringement where the
patentee has by the form of his claim left open that which the alleged
infringer
has done. And it does not affect the fundamental rule that there
will be no infringement unless the alleged infringer has taken
all of the
essential features or integers of the patentee's claim (10).
13. In my opinion the respondents' process does involve the step of confining
the blank in the die cavity. The blank is caught
between the tapered surfaces
of the punch and the die cavity so that deformation may occur. It is kept in
place there, although
only momentarily, so that it may become subject to
pressure. The word
(4) Rodi and Wienenberger A.G. v. Henry Showell Ltd., (1969) RPC 367, at p
391.
(5) [1938] HCA 17; (1938) 60 CLR 36, at p. 51.
(6) ibid., at p. 52.
(7) (1875) 10 Ch App 667, at p. 675.
(8) See C. Van der Lely N.V. v. Bamfords Ltd., (1963) RPC 61, at p 75.
(9) ibid., at pp. 78, 80.(10) See Rodi and Wienenberger A.G. v. Henry Showell Ltd., (1969) RPC, esp. at pp 383-384.
14. In my opinion pressure sufficient to deform the blank is applied with the
punch, even if, as was contended for the respondents,
stresses set up in the
material cause parts of the blank to exert pressure on the walls at the
entrance of the die cavity. The
movement of the punch results in the
application of pressure to the blank, with the result that the blank is
deformed. There was
much evidence directed to the nature of the stresses which
arise in the course of the deformation of the blank. It was admitted
by
counsel for the respondents at the trial that substantial compressive stresses
operate in the respondents' process, and the
evidence established that such
stresses play a necessary part in the deforming process -it is sufficient to
refer to the evidence
of one of the respondents' witnesses, Mr. Delatycki, who
said so in terms. However there was evidence that tensile stresses also
operate in the process. Jacobs J expressed the view that although compressive
forces are important in the respondents' process
in the initial deformation of
the material, the force which takes the material into the space defined
between the punch and the
die cavity is "a tensile force, a 'pulling' of the
material into the defined space after it has been deformed partly by
compressive
forces". He held that the words of claim 1 are apt only to
describe "a process whereby the force which causes the compressive deformation
is the force which directly causes the material to move into the space defined
between the punch and the die cavity". He further
held that "the words
'compressively deform' are in their context apt only to describe an aspect of
a process where the force which
operates throughout all stages of forcing the
material to conform to the shape of the space between the punch and the die
cavity
is a simple compressive force". He accordingly held that there was no
infringement.
15. With all respect I am unable to agree that the words of the claim refer
only to "a simple compressive force", that is, to
a process in which no
tensile stresses are at work. The patent speaks of forming the articles "by
compression", but does not qualify
that expression, or the words
"compressively" or "compress" which are also used, by words that suggest that
the nature of the force
used shall be solely or simply compressive. The verb
"compress" in its relevant ordinary meaning simply means "to press together,
to squeeze" (Shorter Oxford English Dictionary). The claim in its ordinary
meaning refers to a deformation caused by pressing or
squeezing the preformed
blank. If the claim is ambiguous, so that it is permissible to refer to the
body of the specification as
an aid to its construction, it will be seen that
compression is contrasted with stretching. Nothing is said to indicate that
the
compression must be done in such a way as to create no tensile stresses.
Further, evidence given by witnesses for the respondents
as well as by
witnesses for the appellant establishes that in the process described in the
preferred embodiments in the appellant's
specification there are tensile as
well as compressive stresses, even if the latter may be described as dominant.
It would seem
to me to be incorrect to construe the claim by reading into it a
limitation which does not appear there and which would have the
effect that
the preferred embodiments would fall outside the words of the claim. In
reaching this conclusion I do not need to rely
on the reference in the
specification to articles "formed at least in part by compression", and need
not decide whether those words
are intended to refer to We case where part
only of the object is formed by compression from plastic materials (in which
event
they throw no light on the present question) or to the case where the
whole object is formed from plastic materials but only partly
by compression
(in which event they support the view I have just expressed).
16. I rather think that the evidence in which the experts discussed the
nature of the stresses in the complex system that resulted
from the
application of force caused by the movement of the punch into the cavity in
the respondents' process tended to cloud the
issue. It is not expressed to be
an element of the claims that stresses arising in the carrying out of the
process should answer
any particular description. The question was whether the
deformation was caused by compression. It was in my opinion established
that
in the respondents' process the material is squeezed between the punch and the
tapered entrance to the die and that the deformation
results from this
compression. The material is not in my opinion stretched or pulled past line
18. With all respect I cannot accept
the finding of Jacobs J that the "force
whereby the material is drawn into the female die and takes its final shape is
the tensile
force created by the 'drawing' action of the punch". There was
evidence from a number of witnesses (particularly Professor Cherry
and Mr.
Price) that the movement of the material to the left of line 18 (that is,
further from the entrance to the die than line
18) was caused by compressive
forces. There was in my opinion no evidence that established the contrary.
Jacobs J referred to the
evidence of Dr. Grossman, but his evidence did not in
my opinion support the conclusion that the force which took the material past
line 18 was a tensile force, or that the punch "drew" the material in the
sense of pulling or stretching it. Indeed Dr. Grossman
was specifically asked
whether the effect of his evidence was that the material would not move beyond
line 18 if it were not that
the totality of the stresses was predominantly
tensile, and he answered in the negative.
17. For these reasons it should in my opinion be held that in the
respondents' process the blank is "compressively deformed" within
the meaning
of the claim. The question remains whether it is compressively deformed "into
said space". The argument for the respondents
on this point was as follows. In
the respondents' process, although compressive forces are at work on the
material which is being
deformed while it is still to the right of line 18, it
cannot be said that such material is compressively deformed into the space
to
the right of that line because it occupies that space already; it is not
driven into it by compression. It might accurately
be said that the blank is
deformed "in" that space but not that it is deformed "into" that space. The
material is not compressively
deformed into the space to the left of line 18
because it is pulled by tensile forces into that space. It follows from the
conclusions
that I have expressed that this argument also must be rejected.
Once it is held that the material deformed in the respondents' process
is
taken to the left of line 18 by compression it follows that it was
compressively deformed into the space to the left of line
18.
18. No doubt the words of claim 1 would not naturally be used by a person
endeavouring to describe the respondents' process. Nevertheless
I have
concluded for the reasons I have given that all the elements of that claim are
found in the respondents' process.
19. The construction which I have attached to claim 1 does not render the
claim liable to the objection that it is not fairly
based on the
specification. The specification revealed that articles such as shot shell
bodies can be satisfactorily formed from
plastic materials such as
polyethylene and polypropylene in a solid crystalline state, by working below
the crystalline melt point
when the working is done by compression in the
manner indicated in the claims. Claim 1 is not more extensive than the
invention
thus disclosed.
20. I consider that the appellant has made out its case of infringement of
claims 1, 2, 5 and 6.
21. On the second question that arises for decision on the appeal I am in
agreement with the conclusions reached by Jacobs J and
can therefore be brief.
Jacobs J held that claims 10-13 are bad on the grounds that they lack novelty,
are not fairly based and
are too wide. I need consider only the question
whether these claims were fairly based. As I have indicated, all were product
claims.
It is sufficient to set out claim 10 which is in the following terms:
"A relatively thin walled tubular structure having a base at one end and
formed of highly crystalline polyolefin polymer of substantially
regularly
ordered molecular structure, said structure being characterized by the fact
that the wall of the structure has been formed
in the solid state at an
operative temperature below the crystalline melt temperature of the polymer to
provide an increase in
tensile strength of the polymer in said wall at a point
remote from the base of at least twice the tensile strength of the polymer
in
said base. (1 September 1961)"
22. Claims 11, 12 and 13 add further characteristics.
23. It is true that before the appellant's invention it had not been possible
to make a tubular structure such as a shot shell
case formed in one piece
entirely from polymer material and having the requisite characteristics to
make it function satisfactorily.
The articles produced by the appellant were
new articles. They were useful. They were fully described in the claims in the
patent.
But the question is whether the claims extend beyond the subject of
the invention. In my opinion the inventive step lay in the discovery
of the
manner of making the articles. The appellant was entitled to a monopoly in
respect of an article which carried its invention
into effect - that is, an
article made in accordance with the process it discovered - but not in respect
of an article which might
possibly be made by a process entirely different
from that invented by the appellant. The principles applicable are stated in
the
authorities cited in Montecatini Edison S.p.A. v. Eastman Kodak Co. (11).
Claims 10-13 are not limited to products made in accordance
with the processes
invented by the appellant; the claims are framed in terms quite unrelated to
the appellant's inventive idea.
The claims are accordingly not fairly based on
the specification.
24. The question raised by the cross-appeal was as to the validity of claim
17. That claim reads as follows:
"A shell case of predetermined gauge, characterized by the fact that it has
a relatively thick shell base with a central primer
aperture, a relatively
thin tubular shell wall tapering to a lesser thickness remotely from said
base, and a rim flange, said wall
and flange being integral with said base,
said case comprising a body of crystalline olefinic polymer distributed about
said central
aperture and subjected to compressive deformation from a
fore-shortened centrally perforated blank having a concentric concavity
at one
end of said blank to adapt said polymer to compressive plastic elongation to
at least the final finished length and to the
final finished internal and
external configuration of said combined base and wall and to an increase in
tensile yield strength
both longitudinally and circumferentially, all at a
temperature below the crystalline melt temperature of said polymer, said body
hawing Over said length a gauge substantially that of said Wank and said rim
extending outwardly of said body, said strength increasing,
primarily said
longitudinal strength, over said length to the end of the body opposite said
base. (7 February 1962)"
25. That is a product claim, but Jacobs J found that it expressed all the
integers of the appellant's process that result in a
workable process. He held
that the claim is fairly based on the matter described in the specification
once the reference to "compressive
deformation" which appears in claim 17 is
given the meaning which he had found it to have throughout the specification.
I have
already indicated that I do not accept the meaning which Jacobs J
placed on that expression, but for reasons substantially the same
as those I
have given in relation to claim 1, I nevertheless consider that claim 17 was
fairly based on the matter described in
the specification. I hold the claim to
be valid.
26. On the view that Jacobs J took of the meaning of "compressive
deformation" there was no infringement of claim 17. Since I
have taken a
different view it will be necessary, if the question whether this claim was
infringed is to be decided, to determine
the meaning of the words of the claim
that refer to an increase in strength over the length of the product, and the
effect of the
evidence of tests
(11) (1971) 45 ALJR 593, at p. 597.conducted to establish the circumferential strength of certain of the respondents' products. However, it seems to me that once it is decided that claim 1 has been infringed it is unnecessary for practical purposes to decide whether claim 17 also has been infringed. I therefore do not deal with that question.
27. I would allow the appeal, so far as it relates to claims 1, 2, 5 and 6,
and would dismiss the cross-appeal.
STEPHEN AND MASON JJ This is an appeal brought by Olin Corporation against the dismissal by Jacobs J of a suit for infringement of patent. The appellant claimed that the respondents, by manufacturing or selling plastic shotgun shells or cartridge cases, infringed its patent for the invention of a "Process for Working Crystalline Polyolefin Material and Product of Same", in particular in its application to the production of shot shells or cartridge cases. The priority date of the appellant's "Convention Patent" was 1 September 1961.
2. Jacobs J found that none of the process claims (claims 10 inclusive) had
been infringed, this because his Honour considered
that the successive steps
involved in compressive deformation in the appellant's process were not
present in the first respondent's
process. This finding turned upon his
Honour's understanding of claim 1 (the paramount claim) of the appellant's
specification,
an understanding which, according to the appellant, was
erroneous and upon his Honour's finding as to the mode of manufacture of
the
respondentand shot shells, a finding which was also attacked by the appellant
as involving a misconception.
3. His Honour also found that four of the appellant's claims had been
infringed, that is, claims 10-13 inclusive, which were product
claims.
However, he found that the claims were bad for want of novelty and because
they were not fairly based on matter described
in the specification, contrary
to s. 40(2) of the Patents Act 1952 (Cth). The appellant's case is that the
learned judge was wrong
in both respects and that the four product claims were
valid claims.
4. His Honour did not deal with the remaining claims except for giving a
certificate of validity in respect of claim 17.
5. The issue of infringement turns partly upon the correctness of his
Honour's reading of the process claims 1-9, especially claim
1 on which the
other process claims are largely based, and more particularly on the
correctness of his Honour's understanding of
the mode of manufacture of the
respondents' shell cases on which his Honour's conclusion on this issue was
principally based.
6. According to his Honour
"A shotgun shell needs to have special characteristics. The firing of the
charge sets up very high pressures in the base of the
shell and therefore the
base must be strong and rigid enough to resist these pressures which are in
all directions. The walls of
the shell at and near the base must have great
strength, particularly radial strength, so that they are unaffected and so
that
the whole force of the charge is directed longitudinally up the shell
case, carrying the pellets out up the bore of the gun. When
the initial
pressure has been thus withstood the requirements change somewhat. Though a
degree of radial strength is still needed
the main forces are operating
longitudinally. The pellets are forced in a pattern against the internal walls
of the tube and forward
into the bore. At this stage great tensile strength is
needed in order to avoid 'shoot off'. The tube must stretch but it must
recover its former shape so that it may be extracted and so that on extraction
it is not distorted. Otherwise it cannot be used
for reloading.
Moulded plastic shells were found not to possess these required
characteristics. As stated in the specification, they tended
to blow apart in
the side wall and occasionally split lengthwise. They tended to fail at normal
or low temperatures and to result
in 'shoot off'. They would distort and be
unsuitable for reloading. The side walls needing to be relatively thin, the
thinness
of unoriented plastic generally resulted in walls of insufficient
strength."
7. His Honour found that moulded plastic shot shells had the advantage of
being able to be made in one piece and that this advantage
was well known in
the industry before 1961. His Honour continued:
"What was not known was how this advantage could be obtained in a practical
way in conjunction with the highly desirable strength
in the side walls,
particularly longitudinal strength. It was also known that a taper in the
internal walls of the shell, though
not necessary, was a desirable
characteristic both for ease of manufacture and projection of the pellets.
One-piece all brass shotgun
shells had been made for many years with a taper
which resulted in greater thickness and strength at and near the base but
sufficient
strength in the thinner wall at the top. Brass gave sufficient
strength but moulded plastic, even high density polyethylene or polypropylene,
did not.
8. Brass shells had long been disproportionately expensive and therefore
walls of special paper had long been used; but these
had disadvantages
described in the specification. In particular they were unsuited to the
growing popularity of reloading and re-using
of shell cases."
9. It was to this problem, that arising from the deficiencies of earlier
attempts to produce a plastic shell case, that the appellant's
invention was
addressed. The desired object was to combine the utility of a one-piece
plastic shell case with the necessary strength
in the side walls of such a
case. To understand how the appellant's invention presents a solution to the
problem it is necessary
to say something of the characteristics of crystalline
polyolefin material as found by Jacobs J.
10. One of the most important aspects of the discovery of the synthetic
linear polymers, such as the polyamides (nylons) before
the last World War,
was that, unlike metals, they could be stretched to and well beyond the point
of plastic deformation without
breaking. If such a polymer was stretched or
drawn by tensile forces alone to and beyond the point of plastic deformation,
it would
"neck", as would a metal, but instead of the neck leading
comparatively quickly to a break across the material all that happened
was
that the material was permanently plastically elongated and continued unbroken
at a gauge or thickness which could be to some
extent controlled. That
thickness would depend on the molecular weight of the particular variety of
the polyamide being used.
11. The necking and consequent stretching and thinning of the filament did
not result in any proportionate reduction in tensile
strength. On the
contrary, because of the molecular orientation, the strength was retained or
even increased. In the same way,
by stretching, sheets in the form of thin
film could be made and could be given the necessary strength by the
orientation of the
molecular structure.
12. In all these cases the material would be first raised above its
crystalline melt point, and would then be extruded in that
state by forcing it
out through exits in a tank or container in whatever configuration was
desired. In this state it would have
no significant orientation, certainly
none comparable to that which it would obtain when it was subsequently
stretched in its "cold"
state.
13. According to his Honour's findings it was well known in the thermoplastic
industry at the relevant date, 1 September 1961,
that it was the "working" of
the material in a cold state, causing the plastic to flow in a particular
direction or directions,
which resulted in orientation and consequent tensile
strength. By 1961 this was an accepted part of knowledge in the art not only
in the case of working by drawing or stretching but also in respect of working
by compression. It is uncertain whether any significant
practical applications
had been achieved by 1961 in Australia. This was not so overseas where the
orientation of plastic tubing
by the application of compressive forces as well
as tensile forces had been achieved.
14. In 1960 Remington had produced a three-piece oriented plastic tube. The
process was covered by a patent known as the Covington
patent. This involved a
laterally confined process of stretching high density polyethylene under
compression in a die to obtain
tubing with walls of sufficient strength for
use in a cartridge case. This is the only process which resulted in the actual
production
of a plastic cartridge case before 1961. And as the learned primary
judge pointed out, it was acknowledged in the specification
to be part of the
prior art. His Honour went on to say: "This process, however, added nothing to
the commercial and utilitarian
desirability of being able to produce a
one-piece shell case."
15. A further development of some significance had occurred in 1959 when a
patent relating to the cold working of suitable thermoplastic
material by
shaping those materials in a die at a temperature below the crystalline melt
point - the Core patent - was published
in France and Australia. The
significance of this patent is best left for discussion when we come to the
issue of validity.
16. It is against this background that the appellant's specification must be
considered. Claim 1 is in the following terms:
"A process comprising the steps of; confining a preformed blank of a
crystalline polyolefin material in its self-supporting crystalline
state in a
die cavity: closing said die cavity with a punch member dimensioned so as to
define a space between said punch and die
cavity; and applying sufficient
pressure to said blank with said punch to compressively deform into said space
while in said state
and in a temperature range below the crystalline melt
temperature thereof, orientated material of said blank having substantially
increased tensile properties. (1 September 1961)"
17. The process for working crystalline polyolefin material embodied in claim
1 has the advantage that it avoids necking, which
occurred in all earlier
processes. Furthermore, it does not proceed by drawing or stretching which
occurred in earlier instances.
The cartridge case is formed, at least in part,
by compressive deformation of the blank. This occurs at an operative
temperature
below the crystalline melt temperature of the polymer. The speed
of operation of the dies ensures that the temperature stays low.
The
fundamental difference in the appellant's process which brings about its
success is the confining of the blank in the die and
while it is confined
closing the die. By these simultaneous steps deformation occurs as a result of
the exertion of pressure on
the blank between the juxtaposed surfaces of the
die cavity defining the changing space into which it is deformed. There is no
free flow of material because it is all compressed between the tapered punch
sides and the die walls. Other differences in the appellant's
process when it
is compared with metal extrusion processes are the introduction of hoop
stress, the blanks which differ from the
standard metal extrusion cylindrical
slug and the taper, which is not straight or relieved.
18. Of claim 1 Jacobs J had this to say:
"The process described in Claim 1 is apt to describe, and in my opinion only
apt to describe, a process whereby the force which
causes the compressive
deformation is the force which directly causes the material to move into the
space defined between the punch
and the die cavity. This is what occurs when
the primary force, the external force, applied to the material, as by a punch,
is
a compressive force, a simple pushing force. The material yields to that
compressive force as a result of the compressive and tangential
stress and is
squeezed out of the way of We punch."
19. There are two elements in this statement which require some explanation
or qualification. First, there is the presence of
the word "directly" in the
first sentence; then there is the confinement in the second sentence of the
notion of compressive deformation
to "a simple pushing force". If his Honour
is to be taken as suggesting that the claim on its proper construction
excludes the
consequential deformation which results from the forward movement
of the punch when part of the material is squeezed back along
the surface of
the punch as it moves into close proximity with the die, then we should be
disposed to disagree. The deformation
which takes place as the material is
squeezed back along the surface of the punch is the result of the pressure
brought about by
the forward movement of the punch into the die cavity. The
material thus squeezed continues to be compressively deformed within
"the said
space", notwithstanding that the space is between the die and the side of the
punch, as distinct from the space ahead
of the punch and between it and the
die.
20. The space to which claim 1 refers is the space between the punch and the
die as the punch is brought into proximity with the
die cavity. As the punch
then moves forward so as to partially occupy this space, the space to the
extent to which it is not so
occupied will be found ahead of the punch and at
the sides of the punch, between it and the die. The process which claim 1
describes,
involves the compressive deformation of the polyolefin material by
the punch as it moves into the die cavity, and, as we have said,
in so far as
some of the material is squeezed back along the punch it is so squeezed as a
consequence of the pressure generated
by the forward movement of the punch
into the die cavity which diminishes the space between the sides of the punch
and the die
thereby subjecting the material in that area to further pressure
and deformation. There is, we think, nothing in the expression
of the claim
which requires the exclusion of this squeezing process from the concept of
compressive deformation.
21. The cartridge cases manufactured by the first respondent and sold by the
second respondent were made according to a process
which involved the
application of a pre-form of high density polyethylene, a process known in the
metal working art as die drawing.
A blank or slug or pre-form is moulded out
of high density polyethylene with one end thereof solid except for a central
hole where
the shot shell primer would be inserted subsequently. The remainder
of the slug is a shell considerably shorter and with thicker
side walls than
the cartridge case proposed to be made. The base of the pre-form is thick. The
external diameter of the base is
.774". The main external walls are .790" in
diameter, with an internal diameter of .636".
22. The pre-form is forced over a punch so that the main side walls are
stretched. After stretching, the external diameter of
the preform is .830" at
the part immediately beyond the base. The punch is tapered. At the tip it is
shaped so that it will tit
into the primer hole at the base of the pre-form.
It is then rounded for a short distance and thickens over a distance of 3"
from
a diameter of .745" to one of .775". The internal walls of the pre-form
are therefore stretched from .636" diameter to a tapered
diameter ranging
upwards from .745".
23. The female die is straight-sided over most of its length of almost 5" and
at its entrance over a length of 1" there is a taper
from .950" at its outside
wall to .805" at the commencement of the straight-sided portion.
24. When the punch approaches the female die, it enters the tapered portion
and moves down so that its base, which remains unstretched
and which is only
.774", passes straight into the straight-sided part of the die cavity. But
about one-tenth of an inch before
reaching the straight-sided portion of the
die the stretched preform meets the wall of the tapered entrance portion of
the die.
In other words, the punch takes the pre-form with a diameter of .830"
forward to a cavity of a diameter of only .805".
25. Once the pre-form makes contact with the last one-tenth of the tapered
entry to the die cavity, stresses are set up in the
polymer material and
working of the material commences in order to deform it. The main area of
working is in the last one-tenth
of an inch, to which reference has already
been made, but because the material is pushed back along the space between the
punch
and the die for some distance, being in contact both with the sides of
the punch and with the tapered entrance to the die for an
indeterminate
distance, working of the material involving compression and deformation occurs
there as well.
26. His Honour found that the stresses set up in the material during the
working were both tensile and compressive. He went on
to say that the "tensile
stress is that which is in the direction of movement of the body of polymer,
parallel to the axis of the
punch". In our opinion this finding cannot be
sustained; the evidence does not support the view that there is any stress in
the
direction of the movement of the body of polymer parallel to the axis of
the punch.
27. His Honour then went on to say:
"As soon as contact is made the material which first makes contact is
pressed between the punch and the tapered entry and is
under compressive
stress. In this working area in respect of any particular portion of the
material the compressive stress is at
first the stronger and at first it
increases. At this time the tensile stress increases but not so greatly. Once
part of the material
has started yielding the compressive stress in respect of
that part will be reduced and the tensile stresses will continue to increase
and will maintain the material at the yield condition and will draw that
material through the narrowest part of the die entry into
the straight sided
portion of the female die."
28. Again the expert evidence does not establish that any part of the polymer
material is drawn through the narrowest part of
the die entry into the
straight-sided portion of the die. It seems that his Honour's statement is a
conclusion or inference which
he drew from his understanding, dealt with
earlier, that there was in the body of polymer a tensile stress moving in the
direction
in which the punch was moving parallel to its axis.
29. The notion that the forces operating in the first respondent's process
were largely tensile, and were not exclusively compressive,
played a
significant, indeed a decisive, part in his Honour's conclusion that the
respondents' process involved no infringement
of the process claims of the
appellant's patent. That this was so is emphasized in a passage where his
Honour said that "the force
whereby the material is drawn into the female die
and takes its final shape is the tensile force created by the 'drawing' action
of the punch".
30. Once this view of the first respondent's process is displaced, that
process must be regarded as an infringement of claim 1
as we have construed
it. Subject to an examination of the validity of claim 1, this conclusion
makes it unnecessary to consider
whether there has been an infringement of the
other process claims, claims 2-9 (inclusive). The validity of claim 1 is best
discussed
in conjunction with an examination of his Honour's finding that the
product claims, claims 10-13 (inclusive) were invalid because
the objections
to invalidity are common, this being a consequence of the circumstance that
the product claims are based in part
at least on the characteristics of the
product produced by the process.
31. The respondents' case of invalidity as pleaded was based on the following
grounds: (1) Non-compliance with s. 40 of the Patents
Act in that (a) the
specification does not fully describe the alleged invention; (b) the claims do
not define the alleged invention;
(c) the claims are neither clear nor
succinct; and (d) the claims are not fairly based on the matter described in
the specification.
(2) Want of novelty. (3) Obviousness.
32. Ultimately at the trial and subsequently on the hearing of the appeal the
respondents confined themselves to grounds (1)(c)
and (d), (2) and (3) above.
33. Ground (1)(c) was largely, though not exclusively, founded on the
contention that the expression "compressively deform" (claim
1) and its
variants "compressively deforming" (claim 14), "compressive deformation"
(claim 17) and "compressive plastic elongation"
in the same claim are
ambiguous if they are not understood as excluding any force which is not
compressive. In relation to the
issue of infringement as it touches claim 1,
we have expressed the view that the expression "compressively deform" is not
confined
as the respondents would have it and that it embraces a process
having the features of the first respondent's process. It is implicit
in this
view that the expression is not ambiguous. The other matters relied upon by
the respondents to support this ground which
are referred to in their written
submissions are of minor significance only and in our opinion lack substance.
34. Ground (1)(d) is of more importance but it is convenient to postpone a
consideration of it and to deal in the first instance
with the related grounds
(2) and (3), his Honour having decided in favour of the respondents in
relation to ground (2) as well
as ground (1)(d) in its application to claim
10.
35. We turn now to the question of validity, which arises particularly in
relation to claim 1 and claims 10-13; the validity of
claim 17 we shall
reserve for separate consideration. It is necessary to set out claim 10 as it
is the basic claim from which the
other product claims (claims 11-13) are
derived. It is expressed as follows:
"A relatively thin walled tubular structure having a base at one end and
formed of highly crystalline polyolefin polymer of substantially
regularly
ordered molecular structure, said structure being characterized by the fact
that the wall of the structure has been formed
in the solid state at an
operative temperature below the crystalline melt temperature of the polymer to
provide an increase in
tensile strength of the polymer in said wall at a point
remote from the base of at least twice the tensile strength of the polymer
in
said base."
36. The claim is for the product whether produced by the process described in
various ways in claims 1-9 or otherwise. The product
is described and limited
by reference to certain physical characteristics. The description omits the
details of the process which
is the essence of the appellant's inventive idea.
Instead it refers to the tensile Strength of the material in the wall at a
point
remote from the base which is said to be at least twice the tensile
strength of the material in the base.
37. The respondents' case of want of novelty is based on the existence of two
earlier patents, the Core patent and the Covington
patent to which we referred
earlier. The Core patent was published in Paris on 20 January 1959, and lodged
in the Australian Patents
Office in June of that year. According to his
Honour, the patent was designed to achieve a cold working of thermoplastic
material
by shaping the material in a die below the crystalline melt point so
as to secure additional strength in the material. Use of the
process for the
making of a shot shell case was envisaged and the process described involved a
punch and a die each so dimensioned
that a space was defined between the punch
and the die cavity and the application of sufficient pressure to force
thermoplastic
material into the space so defined from a solid slug placed in
the bottom of the die cavity. His Honour found that there was a similarity
between the Core process and that described in the appellant's specification
but he concluded that the Core process "would not
necessarily achieve the
result claimed for it". His Honour pointed out that tremendous pressures are
needed to cause thermoplastic
material to flow under compression when the
material is below the crystalline melt point. The need for these pressures was
stated
in the appellant's specification and the effect of applying them to a
solid slug of material by an untapered die punch at a speed
within any
practical limits would be to cause the temperature of the material to be
raised in parts above the crystalline melt
point with consequential uneven
loss of orientation and irregular formation of the walls. These difficulties
were not recognized
in the Core patent and it provided no solution to the
problems which they created. Moreover, the Core patent made no mention of
highly crystalline polyolefin polymer. Even if such materials were
comprehended by the language of the patent it does not arithmetically
express
the increase of strength which will be obtained, whereas claim 10 asserts a
twofold increase in strength.
38. In these circumstances the Core patent cannot in our view be relied upon
to deprive the appellant's specification of novelty.
The Core patent did not
disclose a process or means of producing the wanted article. Nor did it reveal
any advance in knowledge
or development on which the appellant's patent
depended for its success. All that the Core patent did was to describe an
article
without describing the effective means by which it could be produced.
To our mind this is not enough to justify the conclusion that
the appellant's
claim fails for want of novelty. So much at least emerges from the remarks of
Lord Westbury LC in Hills v. Evans
(12):
"(in order to invalidate the subsequent patent) the antecedent statement
must be such that a person of ordinary knowledge of
the subject would at once
perceive, understand, and be able practically to apply the discovery without
the necessity of making
further experiments and gaining further information
before the invention can be made useful ... the information as to the alleged
invention given by the prior publication must, for the purposes of practical
utility, be equal to that given by the subsequent
patent."
39. In N. Guthridge Ltd. v. Wilfley Ore Concentrator Syndicate Ltd. (13),
Griffith CJ quoted Lord Westbury LC in Betts v. Menzies
(14), when his
Lordship said that a prior patent "ought not to be held to be an anticipation
of a subsequent discovery, unless
you have ascertained that the antecedent
specification discloses a practicable mode of producing the result which is
the effect
of the subsequent discovery". In the same case, Barton J (15),
applied the observations of Lord Westbury LC in Hills v. Evans and
Betts v.
Menzies (16).
40. In reviewing the prior art we dealt briefly with the Covington patent
which related to a three-piece plastic shell case. A
shell case manufactured
in accordance with this patent was the first plastic shell case placed upon
the market. However, Remington
shells manufactured in accordance with the
patent were not imported into or made in Australia until the 1960s. The
plastic shell
case had advantages over the paper shell case. At the same time
it had disadvantages which flowed from its three-piece construction;
it was
wasteful of plastic and it was uneconomic because it needed a dimension fixing
heat treatment. In addition to these disadvantages
it provided no instruction
for reaching the desired goal of a onepiece plastic shell case. The undisputed
evidence is that the
process was incapable of being used for this purpose.
This was because the Covington patent, unlike the appellant's patent, called
for the
(12) [1862] EngR 365; (1862) 31 LJ Ch 457, at p. 463.
(13) [1906] HCA 10; (1906) 3 CLR 583, at p. 589.
(14) [1862] EngR 868; (1862) 10 HLC 117, at p. 154.
(15) (1906) 3 CLR, at p. 599.(16) See also C. Van der Lely N. V. v. Bamfords Ltd., (1963) RPC 61, at p 71.
41. We turn now to obviousness because it was put forward as a logical
inference to be drawn from the evidence as to the prior
art and the expert
evidence dealing with the constituent elements present in the solution to the
problem. The respondents' case
of obviousness is that the appellant's
invention is essentially an adaptation of the backward exrusion process
belonging to the
prior metal art and to the prior plastic art below
crystalline melt point as applied to semi-crystalline polymers the qualities
or characteristics of which were known at the relevant time.
42. A submission of this kind must be viewed with caution for, as Lord Reid
said in the Technograph Printed Circuits v. Mills
and Rockley (Electronics)
Ltd. (17):
"... the question is not whether it is now obvious to the court ... but
whether at the relevant date it would have been obvious
to the unimaginative
skilled technician. A thing which now seems obvious to anyone may at that date
have been far from obvious
to him. In this case he would have been faced with
a large variety of different methods, none of which had proved commercially
useful. He would have had no assurance that any successful solution was
possible, still less would he have known in what direction
to look for it. He
would be expected to try out all obvious modifications or combinations of
these methods which seemed to him
worth trying."
43. These observations apply, with some modification only, to the facts of
this case. Although it may not be correct to say that
the appellant did not
know in what direction to look for a solution to the problem of producing a
one-piece plastic shell case,
the fact is that the problem had not been solved
by others despite vigorous attempts so to do, in particular by the large
companies
with an
(17) (1972) RPC 346, at p. 355.existing sake in the held of manufacturing shot shell cases. We are not persuaded that the appellant's invention was bad for obviousness in any of the manifestations expressed in claims 1, 10-13 or 17.
44. The next objection is that the claims were not fairly based on the
specification and were too wide. Section 40(2) of the Patents
Act 1952
requires that the claim shall be fairly based on the matter described in the
specification. It has been accepted that,
notwithstanding a statutory
prescription of this kind, a claim may be made which defines a monopoly by
reference to a result or
product (18). But it has been repeatedly asserted
that the claim must be "referable to the invention disclosed and cannot extend
to cases where the result represents or may represent a different invention"
(19). So in Mullard Radio Valve Co. Ltd. v. Philco
Radio and Television
Corporation of Great Britain Ltd. (20), Lord Macmillan said:
"But a claim may be for an article which is new, which is useful and which
has subject-matter, yet it may be too wide a claim
because it extends beyond
the subject matter of the invention. The consideration which the patentee
gives to the public disclosing
his inventive idea entitles him in return to
protection for an article which embodies his inventive idea but not for an
article
which, while capable of being used to carry his inventive idea into
effect, is described in terms which cover things quite unrelated
to his
inventive idea, and which do not embody it at all." (21)
45. The consideration which the appellant gave for the monopoly which it
sought was the disclosure that a serviceable one-piece
plastic shot shell case
having uniform and increased strength in the side walls could be made by the
process which the specification
disclosed. His monopoly must be limited by
reference to that disclosure. It cannot extend to the production of plastic
shell cases
produced by new and different means.
46. However, it is accepted that a monopoly may be sought in the result or
product of a process so long at least as the specification
describes
distinctive characteristics of the result or product and in the case of an
article the limitation is "sufficient to characterize
the construction of the
article claimed" (22).
(18) See No-Fume Ltd. v. Frank Pitchford and Co. Ltd. (1935), 52 RPC 231.
(19) Re Mond Nickel Co. Ltd.'s Application (1948), 65 RPC 123, at p 125.
(20) (1936) 2 All ER 920, at p. 933; (1936) 53 RPC 323, at p. 347.(21) See also ibid., at p. 934; p. 348, per Lord Alness; Montecatini Edison S.p.A. v. Eastman Kodak Co. (1971), 45 ALJR 593, at p 597, per Gibbs J.
47. There is no doubt that the appellant's inventive idea extended to the
production of a shell case having the distinctive characteristics
that it was
a serviceable one-piece plastic shot shell case having uniform and increased
strength in the side walls. The problem
was to produce such an article, it
being recognized generally that such an article was a necessary or desirable
development. The
invention supplied a process for the production of the
article and at the relevant time it was the only process by which the article
could be produced.
48. Is this enough to justify the appellant obtaining a monopoly for the
production of the article whether it be produced by its
process or not? We do
not think it is. It would enable the appellant to assert its monopoly against
others who develop other, more
efficient and more economic means of
manufacturing the product, thereby giving it a reward greater than the
consideration which
it has provided in the form of the disclosure which it has
made. It would tend to discourage research and development in the same
field,
much to the disadvantage of the public, and to that of manufacturers who are
minded to develop improved versions of the
product.
49. This is not a case in which the inventor has conceived of and brought
into existence an entirely new or revolutionary product
which stands so far in
advance of, and apart from, previous developments that it works a radical
transformation in the field in
which it is introduced, as, for example, the
invention of the electric light globe. In such a case the inventive step or
the merits
of the invention may be so great that it may be proper to reward
the patentee with a monopoly in the product or article, unlimited
by reference
to the actual process according to which it is produced. Then it may be said
the monopoly conferred is proportionate
to the great benefit which has been
given to the public by the patentee's disclosure. Such a case, so it seems to
us, is far removed
from the present where the invention, though possessing the
requisite element of inventive ingenuity to support the process claim,
is not
of a kind to justify a claim to the product whether made pursuant to the
process or not.
50. Finally on this point it remains to be said that the product claims do
not characterize the construction of the shot shell
case. The one feature to
which attention is drawn in claim 10 is that the strength of the side walls is
twice that of the base.
This is hardly to characterize the construction of the
article.
51. Consequently we are in agreement with Jacobs J that claims 10-13 are
invalid.
52. With respect to claim 17 his Honour granted a certificate of validity. On
this aspect of the case we agree with his Honour's
conclusion and, subject to
the views which we have expressed in relation to compressive deformation, with
his reasons therefore.
53. In the result we would allow the appeal in part and grant the appellant
relief by way of injunction to restrain infringement
of claim 1 of the
specification and such other incidental relief as is appropriate. Otherwise we
would dismiss the appeal and the
cross-appeal.
54. Appeal allowed in so far as it relates to claims 1, 2, 5 and 6 of
Australian Letters Patent No. 286171.
55. Appeal otherwise dismissed.
56. Cross-appeal dismissed.
57. Order of this Court (Jacobs J) set aside in so far as it relates to
claims 1, 2, 5 and 6 and in lieu thereof order that the
respondents be
restrained from infringing any of those claims, that the matter be remitted to
a Justice of this Court to inquire
as to the amount of damages suffered by the
appellant by reason of the respondents' infringements of those claims, and
that the
respondents pay the appellant the amount so ascertained. The costs of
the inquiry to be in the discretion of the Justice considering
it.
58. Respondents to pay the appellant's costs of the action including the
counterclaim and of the appeal except in so far as each
relates to the claims
10-13 of Australian Letters Patent No. 286171.
59. Respondent to pay the appellant's costs of the cross-appeal.
60. Appellant to pay the respondents' costs of so much of the action
including the counterclaim and of the appeal as they relate
to the said claims
10-13.
61. Solicitors for the appellant, Mallesons.
62. Solicitors for the respondents, A. L. C. Flint and Marrie.
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